Copyright Law

H
THE SUBJECT MATTER

OF COPYRIGHT
Requirements for Copyright
Protection
Chapter I introduced some of the reasons that society might find it desirable to
implement a legal rule that grants creators certain exclusive rights in their works.
Translating theory into practice, however, raises a number of important questions.
In this chapter, we consider the basic requirements for copyright protection. As you
read the materials, think about the policies underlying the requirements. Keep in
mind also that a determination of copyrightability says little or nothing about the
value of the copyright or the underlying work to the creator or to society. Whether a
copyright is valuable or not depends on a number of factors, including the nature of
the work, the scope of the copyright and other rights in the work, whether the
creator chooses to exploit the work commercially, and whether the public values
the work.
A. THE ELEMENTS OF COPYRIGHTABLE

SUBJECT MATTER
Over time, Congress has changed its answer to the question of what works
should be protected by copyright. What has not changed, however, is Congress'
starting point-the Constitution:
The Congress shall have Power . . . To promote the Progress of Science and the useful
Arts, by securing for limited Times to Authors and Inventors the exclusive Right to
their respective Writings and Discoveries.
U.S. Canst. , Art. I, §8, d. 8 . As you will see, Congress has broad (although not
infinite) leeway in defining what the terms in the clause mean. Thus, the congres
sional decision about which "writings" should be the subject matter of copyright
protection is primarily one of policy.
49
50 2. Requirements for Copyright Protection
From an economic perspective, the grant of exclusive rights entails a variety of

costs. First, any system of rights entails costs of administration and enforcement.
In the particular case of copyright, the cost of administration (compared especially to
patent law that has an extensive pre-grant examination process) is not especially
significant, but the cost of enforcement, particularly if litigation is required, can
be steep. Additionally, the copyright system results in so-called deadweight losses
because copyright enables creators to price above the marginal cost of their works. 1
Indeed, for the rights to achieve the goal of correcting the public goods problem
discussed in Chapter l, they must allow such pricing. However, the higher price
means that some consumers will not be able to purchase copies of the protected
work. This limits dissemination of the knowledge contained within the work
knowledge that might provide the basis for further progress. This is a second cost
of a copyright system, albeit one that is hard to quantify.
Simple economic theory would hold that a system of exclusive rights should not
incur these costs unless the benefits it produces exceed them. Granting exclusive
rights in a work that would have been created in their absence imposes a loss on
society; granting stronger exclusive rights than necessary to induce creation of a
work also imposes a loss. Conversely, of course, failing to grant rights or granting
weaker ones than necessary to induce creation also imposes a loss. Further compli
cating matters, different types ofworks and different industries have widely varying
incentive structures. Is the incentive required to encourage the efficient level of
software production the same as that required for novels? Should policymakers
conduct a cost-benefit analysis for each individual work, for each type of work, or
in the aggregate? As you will see in this and later chapters, the Act speaks in general
terms but does also sometimes provide quite detailed rules for particular types of
works, partly to acknowledge differences among them and the industries that pro
duce or market them.
In reality, of course, the decision to grant exclusive rights in particular works
does not depend entirely on cost-benefit analysis. Other, noneconomic considera
tions also will militate for (or against) grants ofcopyright protection. Is the work of a
sort that appears to require creativity to produce? Does copyright protection for that
work therefore seem theoretically justified? Would extending protection to a
particular kind of subject matter interfere too much with the creation of new works?
l. Marginal cost is the additional cost to produce one more unit of output. Standard economic
theory holds that in a competitive market, sellers will price their products at marginal cost. Deadweight
loss is the loss associated with noncompetitive pricing (i.e., non-marginal cost pricing) or other factors
that move the market away from the competitive output.
In the case of copyrighted works, the marginal cost is the expense to produce and distribute one
more unit of the medium embodying the work. Pricing at marginal cost, however, does not permit
the creator ofthe work to recoup the fixed costs incurred in creating the work initially. Copyright gives
the rightholder some market power to enable pricing above marginal cost. Copyright thus produces
some amount ofdeadweight loss. Note that the grant ofcopyright protection will not necessarily result
in the rightholder obtaining an economic monopoly, because market substitutes for the work
may exist. The deadweight losses associated with above marginal-cost pricing will increase as the
rightholder's market power increases.
A. The Elements of Copyrightable Subject Matter 51
Finally, once the initial cost-benefit decision t o create a copyright system has
been made, decisions about which works should benefit may simply reflect consid
erations of equity and consistency. Once some works are designated to receive
copyright protection, it may seem only fair that other, similar works also receive
it. As technology has developed, leading to opportunities to create works in new
ways, copyright law has repeatedly had to confront the question whether to expand
protection to new works. As you will see, the answer has almost always been "yes. "
D o you think that Congress should routinely require empirical evidence before
granting new rights (or introducing limits on
existing ones)?
LOOKING FORWARD
Section 1 02 of the Copyright Act represents
the congressional judgment as to what works Note that neither registration with the
Copyright Office nor use of the © symbol
merit the grant of the exclusive copyright rights,
is required to obtain or maintain copyright
identifies some of the categories of subject matter protection. We address the benefits of both
eligible for protection, and places limits on the registration and notice in Chapter 11.
elements of a work eligible for protection:
§102. Subject matter of copyright: In general
(a) Copyright protection subsists, in accordance with this title, in original

works of authorship fixed in any tangible medium of expression, now known
or later developed, from which they can be perceived, reproduced or otherwise
communicated, either directly or with the aid of a machine or device. Works of
authorship include the following categories:
( 1) literary works;
(2) musical works, including any accompanying words;
( 3) dramatic works, including any accompanying music;
( 4) pantomimes and choreographic works;
( 5) pictorial, graphic, and sculptural works;
( 6) motion pictures and other audiovisual works;
( 7) sound recordings; and
(8) architectural works.
(b) In no case does copyright protection for an original work of authorship
extend to any idea, procedure, process, system, method of operation, concept,
principle, or discovery, regardless of the form in which it is described, explained,
illustrated, or embodied in such work.
Thus, § 1 02 establishes three requirements for copyrightable subject matter.
First, the work for which protection is sought must be "fixed" in a tangible medium
of expression. Second, it must be an "original work of authorship." The third and
final requirement is a negative one: Copyright protection for a work that is both
fixed and original will not extend to elements of the work that constitute ideas,
procedures, and the like. In other words, copyright protection does not attach to
every element of a work. Section 1 02 also provides a nonexclusive categorization of
works of authorship eligible for protection so long as they meet the three require
ments. As you will see in later chapters, categorization can be important in
determining the scope of protection. For now, as you read the cases, think about
how the work at issue would be classified.
I. Fixation
Always look first to the statute for a defi Section 1 02(a) requires that a work be "fixed
nition of terms used in the Act. You will in a tangible medium of expression" to be eligible
find many terms- e.g., "fixed," and most
for copyright protection. The Berne Convention
of the subject matter categories - defined
in §101 . Other terms are defined else leaves the decision about whether to require fix
where in the Act. Sometimes, however, ation to member countries (see Berne Conv.
Art. 2 ( 2 ) ), and neither the WIPO Copyright
as in the case of"original works of author
ship," there is no definition in the Act. Treaty nor the TRIPS Agreement requires fixa
tion. Many, if not most, countries' copyright
laws do not include a fixation requirement. As you read the following, consider
why the U.S. requires fixation as a condition of copyright protection.
Congress defined "fixed" in the 1 976 Copyright Act in § 1 0 1 :
A work is"fixed" in a tangible medium of expression when its embodiment in a copy or
phonorecord, by or under the authority of the author, is sufficiently permanent or
stable to permit it to be perceived, reproduced, or otherwise communicated for a
period of more than transitory duration. A work consisting of sounds, images, or
both, that are being transmitted, is "fixed" for purposes of this title if a fixation of
the work is being made simultaneously with its transmission.
1 7 u.s.c. §lOl.
Under § 1 0 1 , there are only two types of media in which a work may be fixed:
copies and phonorecords. Read the definitions of "copies" and "phonorecords" in
§ 1 0 1 now, and consider what the differences are between them and what types of
works are likely to embodied in each.
As Congress explained when enacting the 1 976 Act, it chose the concept of
fixation as a high level approach to the problem ofidentifYing when a copy of a work
could be said to exist. It also intentionally drafted the new statutory definition of
"fixed" to accommodate new technologies:
[The] broad language is intended to avoid the artificial and largely unjustifiable dis
tinctions, derived from [some cases] under which statutory copyrightability has been
made to depend upon the form or medium in which the work is fixed.Under the bill it
makes no difference what the form, manner, or medium of fixation may be-whether it
is in words, numbers, notes, sounds, pictures, or any other graphic or symbolic indicia,
whether embodied in a physical object in written, printed, photographic, sculptural,
punched, magnetic, or any other stable form, and whether it is capable of perception
directly or by means of any machine or device "now known or later developed."
H.R. Rep. No. 94-1476, 94th Cong. , 2d Sess. 52 ( 1 976) , reprinted in 1 976
U .S .C.CA.N. 5659, 5 665 . Note, however, that in the § 1 0 1 definitions of "pho
norecords" and "copies," Congress preserved the distinction between media
embodying sounds and other fixed e mbodiments of copyrighted works.
Some complexities remained, however. Re-read the first sentence of the defini
tion of "fixed. " Despite its breadth, it did not clearly cover live transmissions of, for
example, a comedy routine or song performed over the airwaves, which might not
exist in a copy sufficiently stable to be perceived for a period of more than transitory
duration. Yet broadcasts clearly are able to be perceived by their intended audiences
and it would be paradoxical if no one could claim a copyright interest in a means of
·
dissemination capable of reaching millions of listeners or viewers simultaneously.
This problem also illustrates the difference between U.S. copyright law and that of
other countries that accord protection to perceptible works regardless of fixation.
To solve the problem of live broadcasts while still retaining a fixation require
ment in U .S. copyright law, Congress added a second sentence to the statutory
definition. That sentence adopts a narrow, situation-specific solution to resolve:
the status of live broadcasts-sports, news coverage, live performances of music, etc.
that are reaching the public in unfixed form but that are simultaneously being
recorded. .. . The further question to be considered is whether there has been a fix
ation. If the images and sounds to be broadcast are first recorded (on a video tape, film,
etc.) and then transmitted, the recorded work would be considered a "motion
picture" subject to statutory protection against unauthorized reproduction or retrans
mission of the broadcast. If the program content is transmitted live to the public while
being recorded at the same time, the case would be treated the same; the copyright
owner would not be forced to rely on common law rather than statutory rights in
proceeding against an infringing user of the live broadcast.
Thus, assuming it is copyrightable-as a "motion picture" or "sound recording,"
for example-the content of a live transmission should be regarded as fixed and should
be accorded statutory protection if it is being recorded simultaneously with its
transmission.
H.R. Rep . No. 9 4- 1476, 9 4th Cong., 2d Sess. 52-53 (19 76), reprinted in 19 76
U.S.C.C.A.N. 5659, 5665-66.
This clarification of the copyright status of live transmissions, however, raised
another question: What about a contemporaneous recording of a live performance
that is not also simultaneously being transmitted? Arguably, a contemporaneous
recording of a live performance that is not being transmitted still could qualifY as a
fixation of the work being performed under the first sentence of the statutory def
inition as long as it is prepared by or under the authority of the author. However, the
leading treatise on copyright law takes the opposite view. See Melville B. Nimmer &
David Nimmer, 1 Nimmer on Copyright §l.08[C] [ 2] , at 1-ll5 ( asserting that the
second sentence of the definition sets forth the only circumstances in which "the
simultaneous recordation concept" can effect a fixation) . If a performer can not
cause copyright to subsist in a live performance by making a simultaneous recording,
an unauthorized bootleg recording made by an audience member would not violate
any copyright rights belonging to the performer. 2
2. If the work being performed-e.g., a musical composition or dramatic monologue-were

protected by copyright, the bootlegger would need permission from the copyright owner of that
work to make copies of the recording and distribute them. You will learn about the complicated
field of music copyrights in Chapter 7.
LOOKING FORWARD ·.·

In 1 994, Congress enacted an amendment to
the Copyright Act to implement the TRIPS
In Chapter 8 .B .1 we will consider whether Agreement, which requires protection for live
Congress has the power to protect
musical performances. Section ll0 1 (a) prohibits
"unfixed" works.
the fixation or transmission of a live musical per-
formance without the consent of the performer,
and also prohibits the reproduction or distribution of copies or phonorecords of an
unauthorized fixation of a live musical performance.
The meaning of "fixed" seemed obvious enough both in terms of the media in
which works would be embodied (e.g., books and sheet music, cassette tapes, film,
and hard disks) and as a test for the initial creation of a copyrightable work. For
example, a traditional literary work such as a novel exists, for purposes of federal
copyright protection, from the moment that the author causes it to be fixed on paper
or in a word processing file. But how should courts interpret the statutory language
in the case of digital images that seem to have an ephemeral existence or that change
depending on user interaction?
Williams Electronics, Inc. v. Artie International, Inc.

685 F.2d 870 (3d Cir. 1982)
SLOVITER, J . : . . . Plaintiff-appellee Williams Electronics, Inc. manufactures and sells

coin-operated electronic video games. A video game machine consists of a cabinet
containing, inter alia, a cathode ray tube ( CRT), a sound system, hand controls for
the player, and electronic circuit boards. The electronic circuitry includes a micro
processor and memory devices, called ROMs ( Read Only Memory), which are tiny
computer "chips" containing thousands of data locations which store the instruc
tions and data of a computer program. The microprocessor executes the computer
program to cause the game to operate . . . .
In approximately October 1979 Williams began to design a new video game,
ultimately called DEFENDER, which incorporated various original and unique
audiovisual features. The DEF ENDER game was introduced to the industry at a
trade show in 1980 and has since achieved great success in the marketplace. One of
the attractions ofvideo games contributing to their phenomenal popularity is appar
ently their use of unrealistic fantasy creatures, a fad also observed in the popularity of
certain current films. In the D EFENDER game, there are symbols of a spaceship and
aliens who do battle with symbols of human figures. The p layer operates the flight of
and weapons on the spaceship, and has the mission of preventing invading aliens
from kidnapping the humans from a ground plane.
Williams obtained three copyright registrations relating to its D EFENDER
game: one covering the computer program . . . the second covering the audiovisual
effects displayed during the game's "attract mode"3 . . . and the third covering the
audiovisual effects displayed during the game's "play mode ." 4 . . .
Defendant-appellant Artie International, Inc. is a seller of electronic compo
nents for video games in competition with Williams. The district court made the
following relevant findings which are not disputed on this appeal. Artie has sold
circuit boards, manufactured by others, which contain electronic circuits including a
microprocessor and memory devices (ROMs). These memory devices incorporate a
computer program which is virtually identical to Williams' program for its DEFEN
DER game. The result is a circuit board "kit" which is sold by Artie to others and
which, when connected to a cathode ray tube, produces audiovisual effects and a
game almost identical to the Williams DEFENDER game including both the attract
mode and the play mode. The play mode and actual play of Artie's game, entitled
"DEFENSE COMMAND," is virtually identical to that of the Williams game, i.e.,
the characters displayed on the cathode ray tube including the player's spaceship are
identical in shape, size, color, manner of movement and interaction with other
symbols. Also, the attract mode of the Artie game is substantially identical to that
ofWilliams' game, with minor exceptions such as the absence of the Williams name
and the substitution of the terms "DEF ENSE" and/or "DEF ENSE COMMAND"
for the term "DEFENDER" in its display. Based on the evidence before it, the
district court found that the defendant Artie had infringed the plaintiff's computer
program copyright for the DEFENDER game by selling kits which contain a
computer program which is a copy of plaintiff's computer program, and that the
defendant had infringed both of the plaintiff's audiovisual copyrights for the
DEFENDER game by selling copies of those audiovisual works.
In the appeal before us, defendant does not dispute the findings with respect to
copying but instead challenges the conclusions of the district court with respect to
copyright infringement and the validity and scope of plaintiffs copyrights . . . .
With respect to the plaintiff's two audiovisual copyrights, defendant contends
that there can be no copyright protection for the D EFEND ER game's attract mode
and play mode because these works fail to meet the statutory requirement of
"fixation. " . . . Defendant claims that the images in the plaintiff 's audiovisual
game are transient, and cannot be "fixed. " Specifically, it contends that there is a
lack of "fixation" because the video game generates or creates "new" images each
time the attract mode or play mode is displayed, notwithstanding the fact that the
new images are identical or substantially identical to the earlier ones.
We reject this contention. The fixation requirement is met whenever the work is
"sufficiently permanent or stable to permit it to be . . . reproduced, or otherwise
communicated" for more than a transitory period. Here the original audiovisual
features of the D EFENDER game repeat themselves over and over. The identical
3. The "attract mode" refers to the audiovisual effects displayed before a coin is inserted into the
game. It repeatedly shows the name of the game, the game symbols in typical motion and interaction
patterns, and the initials of previous players who have achieved high scores.
4. The "play mode" refers to the audiovisual effects displayed during the actual play of the game,
when the game symbols move and interact on the screen, and the player controls the movement of one
of the symbols (e.g., a spaceship).
contention was previously made by this defendant and rejected by the court in
Midway Manufacturing Co. v. Artie International) Inc., supra, slip op. at 1 6- 1 8.
Moreover, the rejection of a similar contention by the Second Circuit is also appli
cable here. The court stated:
The [video game's] display satisfies the statutory definition of an original "audiovisual
work," and the memory devices of the game satisfy the statutory requirement of a <<copy))
in which the work is <p,xed. ))The Act defines "copies" as "material objects . . . in which
a work is fixed by any method now known or later developed, and from which the work
can be perceived, reproduced, or otherwise communicated, either directly or with the
aid of a machine or device" and specifies that a work is "fixed" when "its embodiment
in a copy . . . is sufficiently permanent or stable to permit it to be perceived, repro
duced, or otherwise communicated for a period of more than transitory duration." 17
U.S.C. App. §101 (1976). The audiovisual work is permanently embodied in a material
object) the memory devices, from which it can be perceived with the aid of the other
components of the game.
Stern Electronics) Inc. v. Kaufman, 669 F.2d [ 852,] 85 5 - 5 6 [(2d Cir. 1982 ) ]
(footnote omitted; emphasis added) .
Defendant also apparently contends that the player's participation withdraws the
game's audiovisual work from copyright eligibility because there is no set or fixed
performance and the player becomes a co-author of what appears on the screen.
Although there is player interaction with the machine during the play mode which
causes the audiovisual presentation to change in some respects from one game to the
next in response to the player's varying participation, there is always a repetitive
sequence of a substantial portion of the sights and sounds of the game, and many
aspects of the display remain constant from game to game regardless of how the
player operates the controls. See Stern Electronics) Inc. v. Kaufman, 669 F.2d at 85 5 -
5 6 . Furthermore, there is no player participation in the attract mode which is dis
played repetitively without change . . . .
NOTES AND QUESTIONS
I. Why require fixation as a condition of copyright protection? Do works that

are not fixed qualifY as "writings" in the constitutional sense? Are there policy
considerations that militate in favor of requiring fixation?
2. Williams says that player participation that changes the screen display does
not make the audiovisual work "unfixed" for copyright purposes. Do you agree with
the court's reasoning? What criterion does the court use to determine whether the
fixation requirement has been satisfied? How would that criterion apply to newer
generations of games in which artificial intelligence and virtual reality techniques
allow the player to "create" the game as he or she plays? If the display may never be
repeated exactly ( because the same interaction may never occur), is the display
copyrightable?
3. Why do you think Congress included the phrase "by or under the authority
of the author" in the definition of "fixed"? If your copyright professor gives an
off-the-cufflecture and you make an audiotape ofit, is the recording a work "fixed in
a tangible medium of expression" for purposes of obtaining copyright protection?
The fixation question rarely arises in the context of copyrightability; more often,
it arises in cases involving alleged infringement. Infringement of the exclusive right
of reproduction (covered in detail in Chapter 5) can occur only if the allegedly
infringing material is itself fixed in either a copy or a phonorecord. We turn here
to a case involving alleged infringement in the context of digital embodiments of
works, which often have a more ephemeral existence than the embodiments with
which legislators drafting the 19 76 Act were familiar.
Cartoon Network LP v. CSC Holdings, Inc.

536 F.3d 121 (2d Cir. 2008), cert. denied, 557 U.S. 946 (2009)
WALKER, J . : . . .
[ Cablevision provides its subscribers with a Remote Storage DVR System (the
RS- D VR) to allow customers who do not own DVRs to record and play back
content. Cablevision split its programming data stream into two identical streams.
One is transmitted to Cablevision's customers and the other routed through a
buffering device called the Broadband Media Router (BMR) (in 1. 2 second incre
ments). The BMRreformats the data stream and sends it to the Arroyo Server, which
in turn consists of two data buffers and high-capacity hard disks. The data then
moves through the "primary ingest buffer" (in 0 . 1 second increments) . If a cus
tomer requests a recording of the program, the data moves from the primary ingest
buffer ultimately to a part of a hard disk allocated to that customer. Otherwise, the
programming data continues to pass through buffer memory, and is overwritten by
new programming data. ]
Overwritten
Transmitted every 1.2
to Customers seconds
Programming Overwritten
stream every 0.1
Broadband Primary
seconds
Media Router ingest buffer
(BMR)
' If customer "records"
v
"Remote DVR"
-Dedicated server space
for each customer
Discussion . . .
I. The Buffer Data

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," 1 7 U.S.C. §106( 1 ), and thereby infringes the copyright holder's repro
duction 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. In doing so, it relied on a line of
cases beginning with MAl Systems Corp. v. Peak Computer Inc., 991 F.2d 5 1 1
(9th Cir.1993) . . . .
The district court's reliance on cases like MAl Systems is misplaced. In general,
those cases conclude that an alleged copy is fixed without addressing the duration
requirement; it does not follow, however, that those cases assume, much less estab
lish, that such a requirement does not exist. Indeed, the duration requirement, by
itself, was not at issue in MAl Systems and its progeny. . . .
In MAl Systems, defendant Peak Computer, Inc. , performed maintenance and
repairs on computers made and sold by MAl Systems. In order to service a custo
mer's computer, a Peak employee had to operate the computer and run the com
puter's copyrighted operating system software. The issue in MAl Systems was
whether, by loading the software into the computer's RAM , the repairman created
a "copy" as defined in § 1 0 1 . 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, MAl has adequately
shown that the representation created in the RAM is "sufficiently permanent or stable
to permit it to be perceived, reproduced, or otherwise communicated for a period of
more than transitory duration."
Id. at 5 1 8 (quoting 1 7 U. S.C. § 1 0 1 ) .

The MAl Systems court referenced the "transitory duration" language but did
not discuss or analyze it. The opinion notes that the defendants "vigorously" argued
that the program's embodiment in the RAM was not a copy, but it does not specify
the arguments defendants made. Id. at 5 1 7. This omission suggests that the parties
did not litigate the significance of the "transitory duration" language, and the court
therefore had no occasion to address it. This is unsurprising, because it seems fair to
assume that in these cases the program was embodied in the RAM for at least several
minutes.
Accordingly, we construe MAl Systems and its progeny as holding that loading a
program into a computer's RAM can result in copying that program. We do not read
MAl Systems as holding that, as. a matter of law, loading a program into a form of
RAM always results in copying. Such a holding would read the "transitory duration"
language out of the definition, and we do not believe our sister circuit would dismiss
this statutory language without even discussing it. It appears the parties in
MAl Systems simply did not dispute that the duration requirement was satisfied;
this line of cases simply concludes that when a program is loaded into RAM, the
embodiment requirement is satisfied-an important holding in itself, and one we see
no reason to quibble with here.
At least one court, relying on MAl Systems in a highly similar factual setting, has
made this point explicitly. In Advanced Computer Services of Michigan, Inc. v.
MAl Systems Corp., the district court expressly noted that the unlicensed user in
that case ran copyrighted diagnostic software "for minutes or longer," but that the
program's embodiment in the computer's RAM might be too ephemeral to be fixed
if the computer had been shut down "within seconds or fractions of a second" after
loading the copyrighted program. 845 F . Supp. 3 5 6, 363 (E.D. Va. 1994). We have
no quarrel with this reasoning . . . .
Cablevision does not seriously dispute that copyrighted works are "embodied"
in the buffer. Data in the BMR buffer can be reformatted and transmitted to the
other components of the R S-DVRsystem. Data in the primary ingest buffer can be
copied onto the Arroyo hard disks if a user has requested a recording of that data.
Thus, a work's "embodiment" in either buffer "is sufficiently permanent or stable to
permit it to be perceived, reproduced," (as in the case of the ingest buffer) "or
otherwise communicated" (as in the BMR buffer) . The result might be different
if only a single second of a much longer work was placed in the buffer in isolation.
In such a situation, it might be reasonable to conclude that only a minuscule portion
of a work, rather than "a work" was embodied in the buffer. Here, however, where
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 ofmore than transitory duration"?
No bit of data remains in any buffer for more than a fleeting 1 .2 seconds. And unlike
the data in cases like MAl Systems, which remained embodied in the computer's
RAM memory until the user turned the computer off, each bit of data here is rapidly
and automatically overwritten as soon as it is processed. While our inquiry is nec
essarily fact-specific, and other factors not present here may alter the duration anal
ysis significantly, these facts strongly suggest that the works in this case are
embodied in the buffer for only a "transitory" period, thus failing the duration
requirement.
Against this evidence, plaintiffs argue only that the duration is not transitory
because the data persist "long enough for Cablevision to make reproductions from
them. " Br. ofPls.-Appellees the Cartoon Network et al. at 5 1 . 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 oper
ation of the R S-DVR do not create copies, as the Copyright Act defines that
term . . . .
NOTES AND QUESTIONS
l . Do you agree with the Cartoon Network court's reasoning? Why, or why
not? Does the court convincingly distinguish MAl?
2. The House Report accompanying the 1 976 Act states:
[T]he definition of fixation would exclude from the concept purely evanescent or
transient reproductions such as those projected briefly on a screen, shown electron
ically on a television or other cathode ray tube, or captured momentarily in the mem
ory of a computer.
H.R. Rep . No. 94-1476, 94th Cong. , 2d Sess. 5 3 ( 1976), reprinted in 1976
U. S.C.C.A.N. 5659, 5666. Does Cartoon Network or MAl seem more faithful to
the legislative intent expressed in this passage?
PROBLEMS
a. Andy takes photos with his iPhone and sends them via Snapchat to his distri
bution list. The photos are only temporarily stored on Snapchat's servers and the
recipients' devices. A "snap" is deleted from Snapchat's and the recipients' systems
after all recipients have viewed it, although a Snapchat user may set his o r her device to
store the photo indefinitely. Are the snaps fixed? Do Andy's settings matter to this
inquiry?
b. Would your answer to Question a change if Andy uses Instagram instead?
Assume that Instagram stores images on its own servers and in the sender's account
(at the sender's option) but not on the recipients' devices.
2. Originality
The second requirement for copyrightability is that a work be an "original

work[ ] of authorship. " 17 U. S.C. § 1 02(a). Once again, neither the Berne Conven
tion nor the TRIP S Agreement expressly imposes any requirement of originality or
creativity, although both agreements assume an authorial presence. Nonetheless,
nearly all countries require some level of creativity as a prerequisite for copyright
protection. To see why, consider whether it would make sense to grant exclusive
rights to someone who merely copies a preexisting work. From an economic
perspective, the mere copyist has supplied nothing to justifY the cost of a grant of
copyright; from a noneconomic perspective, the copyist has supplied nothing of his
or her "own." But it is difficult to quantifY the level of originality that is most likely
to accomplish copyright law's goals. Indeed, as you will see, it is possible to define .
the term "originality" in different ways.
a. Classic Cases
Although U. S. copyright law has always required originality as a condition of
copyright protection, it has not always done so expressly. Instead, courts found an
originality requirement implicit in the statutes and in the underlying language of the
constitutional grant of authority to enact copyright laws. The following three cases,
while now quite old, are part ofevery copyright lawyer's lexicon and good examples
of early judicial approaches to defining originality.
Burrow-Giles Lithographic Co. v. Sarony

111 u.s. 53 (1884)
MILLER, J.: . . . The suit was commenced by an action at law in which Sarony was
plaintiff and the lithographic company was defendant, the plaintiff charging the
defendant with violating his copyright in regard to a photograph, the title of
which is "Oscar Wilde No. 18 . " . . . [The defendant assigns as error the finding
of] the court below . . . that Congress had and has the constitutional right to protect
photographs and negatives thereof by copyright . . . .
The constitutional question is not free from difficulty. . . . The argument here is,
that a photograph is not a writing nor the production ofan author. Under the acts of
Congress designed to give effect to this section, the persons who are to be benefited
are divided into two classes, authors and inventors. The monopoly which is granted
to the former is called a copyright, that given to the latter, letters patent . . . . It is
insisted in argument, that a photograph being a reproduction on paper of the exact
features of some natural object or of some person, is not a writing of which the
producer is the author.
Section 4952 of the Revised Statutes places photographs in the same class as
things which may be copyrighted with "books, maps, charts, dramatic or musical
compositions, engravings, cuts, prints, paintings, drawings, statues, statuary, and
models or designs intended to be perfected as works of the fine arts." "According to
the practice of legislation in England and America," says Judge Bouvier, 2 Law
Dictionary, 363, "the copyright is confined to the exclusive right secured to the
author or proprietor of a writing or drawing which may be multiplied by the arts of
printing in any of its branches."
The first Congress of the United States, sitting immediately after the formation
of the Constitution, enacted that the "author or authors of any map, chart, book, or
books, being a citizen or resident of the United States, shall have the sole right and
liberty of printing, reprinting, publishing, and vending the same for the period of
fourteen years from the recording of the title thereof in the clerk's office, as after
wards directed. " 1 Stat. 124, 1 . This statute not only makes maps and charts subjects
of copyright, but mentions them before books in the order of designation. The
second section of an act to amend this act, approved April 29, 1 802, 2 Stat. 1 7 1 ,
enacts that from the first day ofJanuary thereafter, h e who shall invent and design,
engrave, etch, or work, or from his own works shall cause to be designed and
engraved, etched or worked, any historical or other print or prints shall have the
same exclusive right for the term of fourteen years from recording the title thereof as
prescribed by law . . . .
The construction placed upon the Constitution by the first act of 1 790, and the
act of 1 802, by the men who were contemporary with its formation, many of whom
were members of the convention which framed it, is of itself entitled to very great
weight, and when it is remembered that the rights thus established have not been
disputed during a period of nearly a century, it is almost conclusive.
Unless, therefore, photographs can be distinguished in the classification on this
point from the maps, charts, designs, engravings, etchings, cuts, and other prints, it
is difficult to see why Congress cannot make them the subject of copyright as well as
the others. These statutes certainly answer the objection that books only, or writing
in the limited sense of a book and its author, are within the constitutional provision.
Both these words are susceptible of a more enlarged definition than this. An author
in that sense is "he to whom anything owes its origin; originator; maker; one who
completes a work of science or literature. " Worcester. So, also, no one would now
claim that the word writing in this clause of the Constitution, though the only word
used as to subjects in regard to which authors are to be secured, is limited to the
actual script of the author, and excludes books and all other printed matter. B y
writings i n that clause is meant the literary productions o f those authors, and Con
gress very properly has declared these to include all forms of writing, printing,
engraving, etching, &c., by which the ideas in the mind of the author are given
visible expression. The only reason why photographs were not included in the
extended list in the act of 1 8 02 is probably that they did not exist, as photography
as an art was then unknown, and the scientific principle on which it rests, and the
chemicals and machinery by which it is operated, have all been discovered long since
that statute was enacted . . . .
Oscar Wilde No. 18
We entertain no doubt that the Constitution is broad enough to cover an act

authorizing copyright of photographs, so far as they are representatives of original
intellectual conceptions of the author.
But it is said that an engraving, a painting, a print, does embody the intellectual
conception of its author, in which there is novelty, invention, originality, and there
fore comes within the purpose of the Constitution in securing its exclusive use or
sale to its author, while the photograph is the mere mechanical reproduction of the
physical features or outlines of some object, animate or inanimate, and involves no
originality of thought or any novelty in the intellectual operation connected with its
visible reproduction in shape of a picture. That while the effect of light on the
prepared plate may have been a discovery in the production of these pictures, and
patents could properly be obtained for the combination of the chemicals, for their
application to the paper or other surface, for all the machinery by which the light
reflected from the object was thrown on the prepared plate, and for all the improve
ments in this machinery, and in the materials, the remainder of the process is merely
mechanical, with no place for novelty, invention or originality. It is simply the
manual operation, by the use of these instruments and preparations, of transferring
to the plate the visible representation of some existing object, the accuracy of this
representation being its highest merit. This may be true in regard to the ordinary
production of a photograph, and, further, that in such case a copyright is no pro
tection. On the question as thus stated we decide nothing . . . .
The third finding of facts says, in regard to the photograph in question, that it is
a "useful, new, harmonious, characteristic, and graceful picture, and that plaintiff
made the same . . . entirely from his own original mental conception, to which he
gave visible form by posing the said Oscar Wilde in front of the camera, selecting and
arranging the costume, draperies, and other various accessories in said photograph,
arranging the subject so as to present graceful outlines, arranging and disposing the
light and shade, suggesting and evoking the desired expression, and from such
disposition, arrangement, or representation, made entirely by plaintiff, he produced
the picture in suit." These findings, we think, show this photograph to be an original
work of art, the product of plaintiff 's intellectual invention, of which plaintiff is the
author, and of a class of inventions for which the Constitution intended that Con
gress should secure to him the exclusive right to use, publish and sell, as it has done
by section 4952 of the Revised Statutes . . . .
Does the standard of originality identified by the Burrow-Giles Court suggest

that copyright protects unposed photographs? How about representational art
intended for use in advertising? Consider the Supreme Court's next pronouncement
on originality.
Bleistein v. Donaldson Lithographing Co.

188 U.S. 239 (1903)
HoLMES,]. : This case comes here from the United States Circuit Court of Appeals
for the Sixth Circuit by writ of error. It is an action brought by the plaintiffs in error
to recover the penalties prescribed for infringements of copyrights. The alleged
infringements consisted in the copying in reduced form of three chromolithographs
prepared by employees of the plaintiffs for advertisements of a circus owned by one
Wallace. Each of the three contained a portrait ofWallace in the corner and lettering
bearing some slight relation to the scheme of decoration, indicating the subject of
the design and the fact that the reality was to be seen at the circus. One ofthe 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 Litho
graphing Co. v. Donaldson Lithographing Co., 1 04 Fed. Rep. 993 . . . .
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 Litho
graphing Co. v. Sarony, 1 1 1 U. S. 5 3 . It is obvious also that the plaintiffs' case is not
affected by the fact, if it be one, that the pictures represent actual groups-visible
things. They seem from the testimony to have been composed from hints or descrip
tion, not from sight of a performance. But even if they had been drawn from the life,
that fact would not deprive them of protection. The opposite proposition would
mean that a portrait by Velasquez or Whistler was common property because others
might try their hand on the same face. Others are free to copy the original. They are
not free to copy the copy. The copy is the personal reaction of an individual upon
nature. Personality always contains something unique. It expresses its singularity
even in handwriting, and a very modest grade of art has in it something irreducible,
which is one man's alone. That something he may copyright unless there is a restric
tion in the words of the act . . . .
We assume that the construction of Rev. Stat. §4952, allowing a copyright to
the "author, inventor, designer, or proprietor . . . of any engraving, cut,
print . . . [or] chromo" is affected by the act of 1 8 74, c. 3 0 1 , §3, 18 Stat. at L.
78, 79 . That section provides that, "in the construction of this act the words
'engraving,' 'cut' and 'print' shall be applied only to pictorial illustrations or
works connected with the fine arts. ' ' We see no reason for taking the words
"connected with the fine arts" as qualifYing anything except the word "works,''
but it would not change our decision if we should assume further that they also
qualified "pictorial illustrations," as the defendant contends.
These chromolithographs are "pictorial illustrations." The word "illustrations"
does not mean that they must illustrate the text of a book, and that the etchings of
Rembrandt or Steinla's engraving of the Madonna di San Sisto could not be pro
tected today if any man were able to produce them. Again, the act however con
strued, does not mean that ordinary posters are not good enough to be considered
within its scope. The antithesis to "illustrations or works connected with the fine
arts" is not works oflittle merit or ofhumble degree, or illustrations addressed to the
less educated classes; it is "prints or labels designed to be used for any other articles
of manufacture. " Certainly works are not the less connected with the fine arts
because their pictorial quality attracts the crowd and therefore gives them a real
use-ifuse 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 adver
tisement. 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.
Circus Poster
Finally, the special adaptation of these pictures to the advertisement of the

Wallace shows does not prevent a copyright. That may be a circumstance for the
jury to consider in determining the extent of Mr. Wallace's rights, but it is not a bar.
Moreover, on the evidence, such prints are used by less pretentious exhibitions when
those for whom they were prepared have given them up.
It would be a dangerous undertaking for persons trained only to the law to
constitute themselves final judges of the worth of pictorial illustrations, outside
of the narrowest and most obvious limits. At the one extreme, some works of genius
would be sure to miss appreciation. Their very novelty would make them repulsive
until the public had learned the new language in which their author spoke. It may be
more than doubted, for instance, whether the etchings of Goya or the paintings of
Manet would have been sure ofprotection when seen for the first time. At the other
end, copyright would be denied to pictures which appealed to a public less educated
than the judge. Yet if they command the interest of any public, they have a
commercial value-it would be bold to say that they have not an aesthetic and
educational value-and the taste of any public is not to be treated with contempt.
It is an ultimate fact for the moment, whatever may be our hopes for a change. That
these pictures had their worth and their success is sufficiently shown by the desire to
reproduce them without regard to the plaintiffs' rights. We are of opinion that there
was evidence that the plaintiffs have rights entitled to the protection of the law.
NOTES AND QUESTIONS
l . IdentifY and compare the originality standards that Burrow-Giles and

Bleistein employ. Which makes more sense in light of the copyright system's
goals?
2. Focus on the statement in Bleistein: "Others are free to copy the original.
They are not free to copy the copy." Why not? Suppose, for example, that an artist
travels to Colorado and paints a landscape of the Colorado Rockies. A company
based in New York wishes to use the landscape to advertise its product. Why should
the company incur the costs of sending someone to Colorado to paint the same
landscape?
3. In Bleistein, the court states, "That these pictures had their worth and their
success is sufficiently shown by the desire to reproduce them without regard to the
plaintiffs' rights . . . . We are of the opinion that there was evidence that the plaintiffs
have rights entitled to the protection of the law. " Should evidence of value be
relevant to the question of copyrightability? Why, or why not?
4. Perhaps the most famous part of the Bleistein opinion is Justice Holmes's
discussion of the dangers of requiring judges to evaluate aesthetic merit. His con
clusion that judges should not do so has become known as the Bleistein nondiscri
mination principle. Is this principle justified for all types of works? In particular, why
should the artwork in advertisements be protected by copyright? Are copyright
incentives required for the creation of advertisements?
The first time that Congress attempted a comprehensive statement of the

sorts of works entitled to copyright protection, it chose language that mirrored
that of the constitutional grant. Section 4 of the 1 909 Act provided that " [t]he
works for which copyright may be secured under this title shall include all
the writings of the author." Cases decided under the 1909 Act continued to follow
the Court's guidance about the nature of the originality requirement implicit in that
formulation.
Alfred Bell & Co. v. Catalda Fine Arts, Inc.

191 F.2d 99 (2d Cir. 1951)
[The plaintiff asserted copyrights in eight mezzotint engravings of paintings from

the late eighteenth and early nineteenth centuries. The mezzotint process involved
drawing a hand tool across a copper plate, tracing a photograph of the original work,
pressing the tracing on the copper plate, and hand-scraping the picture on the plate
to produce images oflight and shadow. The plate was then covered with steel. Color
would be applied by hand before the production of each print. The artist's goal was
to reproduce the paintings as accurately as possible in the mezzotints. The paintings
on which the mezzotints were based were no longer protected by copyright. The
defendants produced and sold color lithographs of the mezzotints.
The district court found that

[ i] t is possible by this [ mezzotint] process to make quite a satisfactory rep roduction of
the original painting in whatever size desired . .. preserving the softness of line which
is characteristic of the oil painting. It is not, however, possible to make a photographic
copy of the painting by this method exact in all its details. The work of the engraver
upon the plate requires the individual conception, judgment and execution by the
engraver on the depth and shape of the depressions in the plate to be made by the
scraping process in order to produce in this other medium the engraver's concept of
the effect of the oil painting. No two e ngravers can produce identical interpretations
of the same oil painting.
74 F. Supp. 973, 975 (S.D.N.Y. 1947). The district court found the plaintiff 's
copyright valid and infringed. Defendant appealed. ]
FRANK, J.: Congressional power to authorize both patents and copyrights is
contained in Article 1, §8 of the Constitution. In passing on the validity of patents,
the Supreme Court recurrently insists that this constitutional provision governs. On
this basis, pointing to the Supreme Court's consequent requirement that, to be
valid, a patent must disclose a high degree of uniqueness, ingenuity and inventive
ness, the defendants assert that the same requirement constitutionally governs copy
rights. As several sections of the Copyright Act-e.g., those authorizing copyrights
of "reproductions ofworks of art," maps, and compilations-plainly dispense with
any such high standard, defendants are, in effect, attacking the constitutionality of
those sections. But the very language of the Constitution differentiates (a)
"authors" and their "writings" from (b) "inventors" and their "discoveries . "
Those who penned the Constitution,2 o f course, knew the difference. The pre
revolutionary English statutes had made the distinction. In 1783, the Continental
Congress had passed a resolution recommending that the several states enact leg
islation to "secure" to authors the "copyright" of their books. Twelve of the
thirteen states (in 1 78 3 - 1 786) enacted such statutes. Those of Connecticut and
North Carolina covered books, pamphlets, maps, and charts.
Moreover, in 1 790, in the year after the adoption of the Constitution, the first
Congress enacted two statutes, separately dealing with patents and copyrights. The
patent statute, enacted April 1 0 , 1 790, 1 Stat. 1 09, provided that patents should issue
only if the Secretary of State, Secretary ofWar and the Attorney General, or any two of
them "shall deem the invention or discovery sufficiently useful and important"; the
applicant for a patent was obliged to file a specification "so particular" as "to distinguish
the invention or discovery from other things before known and used . . . "; the patent
was to constitute primafacie evidence that the patentee was "the first and true inventor
or . . . discoverer . . . of the thing so specified." The Copyright Act, enacted May 3 1 ,
1790, 1 Stat. l 24, covered "maps, charts, and books." A printed copy ofthe title ofany
map, chart or book was to be recorded in the Clerk's office of the District Court, and a
copy of the map, chart or book was to be delivered to the Secretary of State within six
months after publication. Twelve years later, Congress in 1 802, 2 Stat. 1 7 1 , added, .to
matters that might be copyrighted, engravings, etchings and prints.
2. Many of them were themselves authors.

Thus legislators peculiarly familiar with the purpose of the Constitutional grant,
by statute, imposed far less exacting standards in the case of copyrights. They autho
rized the copyrighting of a mere map which, patently, calls for no considerable
uniqueness. They exacted far more from an inventor. And, while they demanded
that an official should be satisfied as to the character of an invention before a patent
issued, they made no such demand in respect of a copyright. . . . [T]he Constitu
tion, as so interpreted, recognizes that the standards for patents and copyrights are
basically different.
The defendants' contention apparently results from the ambiguity of the word
"original. " It may mean startling, novel or unusual, a marked departure from the
past. Obviously this is not what is meant when one speaks of"the original package,"
or the "original bill," or (in connection with the "best evidence" rule) an "original"
document; none of those things is highly unusual in creativeness. "Original" in
reference to a coryrighted work means that the particular work "owes its origin"
to the "author. " No large measure of novelty is necessary . . . .
. . . [N]othing in the Constitution commands that copyrighted matter be strik
ingly unique or novel. Accordingly, we were not ignoring the Constitution when we
stated that a "copy of something in the public domain" will support a copyright if it
is a "distinguishable variation"; or when we rejected the contention that "like a
patent, a copyrighted work must be not only original, but new," adding, "That is
not . . . the law as is obvious in the case ofmaps or compendia, where later works will
necessarily be anticipated." All that is needed to satisfY both the Constitution and
the statute is that the "author" contributed something more than a "merely trivial"
variation, something recognizably "his own . " Originality in this context "means
little more than a prohibition of actual copying. " No matter how poor artistically
the "author's" addition, it is enough if it be his own. Bleistein v. Donaldson
Lithographing Co., 1 8 8 U.S. 239 . . . .
We consider untenable defendants' suggestion that plaintiff's mezzotints could
not validly be copyrighted because they are reproductions of works in the public
domain. Not only does the Act include "Reproductions of a work of art," but
while prohibiting a copyright of "the original text of any work . . . in the public
domain"-it explicitly provides for the copyrighting of "translations, or other ver
sions of works in the public domain. " The mezzotints were such "versions. " They
"originated" with those who made them, and-on the trial judge's findings well
supported by the evidence-amply met the standards imposed by the Constitution
and the statute. Z2 There is evidence that they were not intended to, and did not,
8. Burrow-Giles Lithographic Co. v. Sarony, I l l U.S. 53, 57-58.

22. See Copinger, The Law of Copyrights (7th ed. 1 936) 46: "Again, an engraver is almost
invariably a copyist, but although his work may infringe copyright in the original painting if made
without the consent of the owner of the copyright therein, his work may still be original in the sense
that he has employed skill and judgment in its production. He produces the resemblance he is desirous
of obtaining by means very different from those employed by the painter or draughtsman from whom
he copies: means which require great labour and talent. The engraver produces his effects by the
management oflight and shade, or, as the term of his art expresses it, the chiaroscuro. The due degrees
oflight and shade are produced by different lines and dots; he who is the engraver must decide on the
choice of the different lines or dots for himself, and on his choice depends the success of his print. "
imitate the paintings they reproduced. But even if their substantial departures from
the paintings were inadvertent, the copyrights would be valid?3 A copyist's bad
eyesight or defective musculature, or a shock caused by a clap of thunder, may yield
sufficiently distinguishable variations. Having hit upon such a variation unintention
ally, the "author" may adopt it as his and copyright it.
Accordingly, defendants' arguments about the public domain become irrele
vant. They could be relevant only in their bearing on the issue of infringement, i.e.,
whether the defendants copied the mezzotints. But on the findings, again well
grounded in the evidence, we see no possible doubt that defendants, who did
deliberately copy the mezzotints, are infringers. For a copyright confers the
exclusive right to copy the copyrighted work-a right not to have others copy it.
Nor were the copyrights lost because of the reproduction of the mezzotints in
catalogues . . . .
NOTES AND QUESTIONS
l . Should copyright protect the result of"[ a] copyist's bad eyesight or defective
musculature, or a shock caused by a clap of thunder"?
2. What role did the provisions of the 1909 Act play in the Second Circuit's
determination of copyrightability?
3. Should the fact that the creator is copying a preexisting work that is in the
public domain affect the evaluation of what is required to obtain a copyright in the
new work? How does the court resolve this question? We return to this question,
which involves what are known in copyright law as "derivative works," later in this
chapter.
Note on Nonobviousness and Originality
In Burrow-Giles, the Court hinted at some of the differences between copyright

law and patent law, which offers protection to certain technological innovations.
Copyright law requires that a work of expression be "original" to be protected.
Patent law, in contrast, requires that an invention be new, useful, and nonobvious to
qualify for protection. Section 103 of the Patent Act, which defines nonobviousness,
specifies that a patent may not issue "if the differences between the subject matter
sought to be patented and the prior art are such that the subject matter as a whole
would have been obvious . . . to a person having ordinary skill in the art to which
said subject matter pertains. " 35 U.S.C. § 1 03(a). Under the 1 976 Copyright Act,
23. See Kallen, Art and Freedom ( 1942 ) 977 to the effect that "the beauty of the human singing
voice, as the western convention of music hears it, depends upon a physiological dysfunction of the
vocal cords . . . .
"
Plutarch tells this story: A painter, enraged because he could not depict the foam that filled a
horse's mouth from champing at the bit, threw a sponge at his painting; the sponge splashed against
the wall-and achieved the desired result.
no prior assessment of the work's level of originality is required; instead, copyright

automatically subsists in an original work of authorship at the time the work is fixed
in a tangible medium of expression. In contrast, to obtain a patent, the inventor
must file an application with the Patent and Trademark Office ( PTO) . An examiner
will assess whether the application meets the statutory requirements. Often, the
examiner will determine that the application as written does not meet the nonob
viousness standard, and the inventor will need to narrow the claims to avoid
rejection.
As both the Patent Act and the patent practice of examination make clear, the
requirement of nonobviousness is significantly more stringent than the copyright
requirement of originality. In Graham v. John Deere Co., 383 U.S. l ( 1966), the
Supreme Court indicated that the nonobviousness threshold for patentability is
constitutionally mandated:
The [Intellectual Property] clause is both a grant of power and a limitation. This
qualified authority, unlike the power often exercised in the sixteenth and seventeenth
centuries by the English Crown, is limited to the promotion of advances in the "useful
arts. " It was written against the backdrop of the practices-eventually curtailed by the
Statute of Monopolies-of the Crown in granting m onopolies to court favorites in
goods or businesses which had long before been enjoyed by the public. See Meinhardt,
Inventions, Patents and Monopoly, pp. 30-35 (London, 19 46). The Congress in the
exercise of the patent power may not overreach the restraints imposed by the stated
constitutional purpose.Nor may it enlarge the patent monopoly without regard to the
innovation, advanc ement or social benefit gained thereby. Moreover, Congress may
not authorize the issuance of patents whose effects are to remove existent knowledge
from the public domain, or to restrict free access to materials already available. Inno
vation, advancement, and things which add to the sum of useful knowledge are inher
ent requisites in a patent system which by constitutional command must "promote the
Progress of . . . useful Arts. " This is the standard expressed in the C onstitution and it
may not be ignored. And it is in this light that patent validity " requires reference to a
standard written into the Constitution . " A. & P. Tea Co. v. Supermarket Corp., [340
U.S. 1 47,] 1 54 [(19 5 0 ) ] (concurring opinion).
3 8 3 U.S. at 5-6.
One consequence of the difference in threshold standards for protectability is
that the copyright and patent systems have very different rules about the treatment
of independently created works and inventions, respectively. Recall again Justices
Holmes's statement in Bleistein that " [ o ]thers are free to copy the original. They are
not free to copy the copy." Because copyright law requires simply that a work not
have been copied, a copyright owner cannot obtain relief against another author
who independently generates expression that replicates the copyrighted work.
Instead, a second comer who is an independent creator may receive her own
copyright. Because patent law requires that a patentable invention represent a non
obvious advance over all existing prior art, a second comer who independently
generates an already patented invention may not receive a patent. Further, a patent
confers the exclusive right to make, use, or sell the invention; thus, the second comer
who independently generates a patented invention may not make, use, or sell it
without infringing the patent.
NOTES AND QUESTIONS
l . Why do you think patent law and copyright law have such different threshold
standards and such different rules about independent creation? If patented works are
more expensive to develop than copyrighted works, might that explain the differ
ences? See Dan L. Burk, Patenting Speech, 79 Tex. L. Rev. 99, 1 5 3 (2000) . Or do the
threshold requirements reflect a trade-off between quality (patent) and quantity
(copyright)? See Paul Goldstein, Infringement of Copyright in Computer Programs,
47 U. Pitt. L. Rev. 1 1 19, 1 12 1 ( 1986). If so, why choose this trade-off? Does
copyright law's threshold standard differ from that of patent law because copyright
protects aesthetic works rather than useful ones? See Douglas Y'Barbo, The Heart of
the Matter: The Property Right Conferred by Copyright, 49 Mercer L. Rev. 643,
665-66 ( 1998 ) .
2. Consider, again, whether a higher standard o f originality would be appro
priate. Should the copyright originality standard perform the sort of gatekeeping
function that the patent nonobviousness standard performs? For discussion of this
question, see Joseph Scott Miller, Hoisting Originality) 3 1 Cardozo L. Rev. 4 5 1
(2009 ) ( arguing that the social cost o fcopyright protection has grown as copyright's
reach has expanded, and that such cost can be mitigated by recalibrating originality
to reward the production of unconventional expression) .
b. Establishing the Modern Originality Standard

In the 1976 Act, Congress deliberately chose new language to describe the sorts
of works eligible for copyright protection: "original works of authorship. " 1 7
U.S.C. § l 02(a). As the legislative history of the Act explains:
[A] recurring question [ under the 1909 Act] has been whether the statutory and the
constitutional provisions are coextensive. If so, the courts would be faced with the
alternative of holding copyrightable something that Congress clearly did not intend to
protect, or of holding constitutionally incapable of copyright something that Congress
might one day want to protect. To avoid these equally undesirable results, the courts
have indicated that "all the writings of an author" under the [ 1909 Act] is narrower
in scope than the "writings" of "authors" referred to in the Constitution. The bill
avoids this dilemma by using a different phrase-"original works of authorship"-in
characterizing the general subject matter of statutory copyright protection.
H .R. Rep . No. 94- 1476, 94th Cong. , 2d Sess. 5 1 ( 1976), reprinted in 1 9 76
U.S.C.C.A.N. 5659, 5664. In other words, the intent of the 1 976 Act was to
"avoid exhausting the constitutional power of Congress to legislate in [the]
field" of copyrightable subject matter. Id.
But the 1 976 Act does not indicate exactly what Congress meant by "original
works of authorship. " According to the legislative history, " [ t]he phrase 'original
works of authorship,' which is purposely left undefined, was intended to incorporate
without change the standard of originality established by the courts under the
[ 1 909 Act] . This standard does not include requirements of novelty, ingenuity,
or esthetic merit, and there is no intention to enlarge the standard of copyright
protection to require them. " Id. The task of interpreting the scope of the statutory
grant of copyright protection was thus left, once again, to the courts.
In the United States, both as a statutory matter and as a constitutional matter,
the modern definition of "originality" requires more than mere independent
creation, but not much more. In the following case, the Supreme Court articulated
the modern definition of originality.
Feist Publications, Inc. v. Rural Telephone Service Co.

499 U.S. 340 (1991)
O'CONNOR, J. : . . .
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 annu
ally 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 adver
tisements of various sizes. Rural distributes its directory free of charge to its sub
scribers, but earns revenue by selling yellow pages advertisements.
Feist Publications, Inc., is a publishing company that specializes in area-wide
telephone directories. Unlike a typical directory, which covers only a particular
calling area, Feist's areawide directories cover a much larger geographic range,
reducing the need to call directory assistance or to consult multiple directories.
The Feist directory that is the subject of this litigation covers 1 1 different telephone
service areas in 1 5 counties and contains 46,878 white pages listings-compared to
Rural's approximately 7,700 listings. Like Rural's directory, Feist's is distributed
free of charge and includes both white pages and yellow pages. Feist and Rural
compete vigorously for yellow pages advertising . . . .
Of the 1 1 telephone companies, only Rural refused to license its listings to Feist.
Rural's refusal created a problem for Feist, as omitting these listings would have left a
gaping hole in its area-wide directory, rendering it less attractive to potential yellow
pages advertisers . . . .
Unable to license Rural's white pages listings, Feist used them without Rural's
consent. Feist began by removing several thousand listings that fell outside the
geographic range of its area-wide directory, then hired personnel to investigate
the 4,9 3 5 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. Four of
these were fictitious listings that Rural had inserted into its directory to detect
copying . . . .
II
A
This case concerns the interaction oftwo well-established propositions. The first
is that facts are not copyrightable; the other, that compilations offacts generally are.
Each of these propositions possesses an impeccable pedigree . . . .
There is an undeniable tension between these two propositions. Many compila
tions consist of nothing but raw data-i.e.) wholly factual information not accom
panied by any original written expression. On what basis may one claim a copyright
in such a work? Common sense tells us that 1 00 uncopyrightable facts do not
magically change their status when gathered together in one place . . . .
The key to resolving the tension lies in understanding why facts are not copy
rightable. The sine qua non of copyright is originality. To qualifY for copyright
protection, a work must be original to the author. . . . Original, as the term is
used in copyright, means only that the work was independently created by the
author (as opposed to copied from other works), and that it possesses at least
some minimal degree of creativity. 1 M . Nimmer & D. Nimmer, Copyright
§§2.01 [A], [B] ( 1990) (hereinafter Nimmer) . To be sure, the requisite level of
creativity is extremely low; even a slight amount will suffice. The vast majority of
works make the grade quite easily, as they possess some creative spark, "no matter
how crude, humble or obvious" it might be. Id. , § l .08 [ C] [ 1 ] . . . .
Originality is a constitutional requirement. The source ofCongress' power to enact
copyright laws is Article I, §8, d. 8, of the Constitution, which authorizes Congress to
"secur[ e] for limited Times to Authors . . . the exclusive Right to their respective Writ
ings." In two decisions from the late 1 9th century-The Trade-Mark Cases, 100 U.S.
82 ( 1 879); and Burrow-Giles Lithographic Co. v . Sarony, l l l U.S. 53 ( 1884)-this
Court defined the crucial terms "authors" and "writings." In so doing, the Court made
it unmistakably clear that these terms presuppose a degree of originality. . . .
It is this bedrock principle of copyright that mandates the law's seemingly dis
parate treatment of facts and compilations. "No one may claim originality as to
facts." [Nimmer], §2 . l l [A], p. 2 - 1 5 7 . This is because facts do not owe their origin
to an act of authorship. The distinction is one between creation and discovery: The
first person to find and report a particular fact has not created the fact; he or she has
merely discovered its existence . . . .
Factual compilations, on the other hand, may possess the requisite originality. The
compilation author typically chooses which facts to include, in what order to place
them, and how to arrange the collected data so that they may be used effectively
by readers. These choices as to selection and arrangement, so long as they are
made independently by the compiler and entail a minimal degree of creativity,
are sufficiently original that Congress may protect such compilations through the
copyright laws . . . .
This inevitably means that the copyright in a factual compilation is thin.

Notwithstanding a valid copyright, a subsequent compiler remains free to use the
facts contained in another's publication to aid in preparing a competing work, so long
as the competing work does not feature the same selection and arrangement. . . .
It may seem unfair that much of the fruit of the compiler's labor may be used by
others without compensation. As Justice Brennan has correctly observed, however,
this is not "some unforeseen byproduct of a statutory scheme." Harper & Row, 471
U.S. , at 589 (dissenting opinion) . It is, rather, "the essence of copyright," ibid., and
a constitutional requirement. The primary objective of copyright is not to reward
the labor of authors, but "[ t ]o promote the Progress of Science and useful Arts."
Art. I, §8, d . 8 . Accord, Twentieth Century Music Corp. v. Aiken, 422 U.S. 1 5 1 , 1 5 6
( 1 975 ). To this end, copyright assures authors the right to their original expression,
but encourages others to build freely upon the ideas and information conveyed by a
work. Harper & Row, supra, 471 U.S., at 5 5 6 - 5 5 7 . 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 expres
sion, only the compiler's selection and arrangement may be protected; the raw facts
may be copied at will. This result is neither unfair nor unfortunate. It is the means by
which copyright advances the progress of science and art . . . .
B
As we have explained, originality is a constitutionally mandated prerequisite for
copyright protection. The Court's decisions announcing this rule predate the
Copyright Act of 1 909, but ambiguous language in the 1909 Act caused some
lower courts temporarily to lose sight of this requirement . . . .
. . . [T]hese courts developed a new theory to justify the protection of factual
compilations. Known alternatively as "sweat of the brow" or "industrious collec
tion," the underlying notion was that copyright was a reward for the hard work
that went into compiling facts. The classic formulation of the doctrine appeared in
Jeweler)s Circular Publishing Co. [ v. Keystone Publishing Co.] , 2 8 1 F . [83 (2d Cir.
1922 ) ] , at 8 8 :
The right to copyright a book upon which one has expended l abor 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 origi
nality, 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 ofinformation 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 . . . . "Sweat of the brow" courts thereby eschewed the most
fundamental axiom of copyright law-that no one may copyright facts or ideas . . . .
Without a doubt, the "sweat of the brow" doctrine flouted basic copyright
principles. Throughout history, copyright law has "recognize[d] a greater need
to disseminate factual works than works of fiction or fantasy. " Harper & Row,
471 U.S., at 563. Accord, Gorman, Fact or Fancy: The Implications for Copyright,
29 J. Copyright Soc. 560, 563 ( 1982 ). But "sweat of the brow" courts took a
contrary view; they handed out proprietary interests in facts and declared that
authors are absolutely precluded from saving time and effort by relying upon the
facts contained in prior works. In truth, "[ i ]t is just such wasted effort that the
proscription against the copyright of ideas and facts . . . [is] designed to prevent. "
Rosemont Enterprises, Inc. v. Random House, Inc., 366 F . 2 d 3 0 3 , 3 1 0 ( CA2 1966 ) ,
cert. denied, 3 8 5 U.S. 1 009 ( 1967). "Protection for the fruits o f 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.
c. . .
. . . 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. " 1 7 U.S.C. § 102(a). In making explicit the originality requirement,
Congress announced that it was merely clarifYing existing law . . . .
To ensure that the mistakes of the "sweat of the brow" courts would not be
repeated, Congress took additional measures. For example, §3 of the 1909 Act had
stated that copyright protected only the "copyrightable component parts" of a
work, but had not identified originality as the basis for distinguishing those
component parts that were copyrightable from those that were not. The 1976
Act deleted this section and replaced it with § l 02(b ), which identifies specific ally
those elements of a work for which copyright is not available . . . . Section 1 02(b) is
universally understood to prohibit any copyright in facts . . . .
Congress took another step to minimize confusion by deleting the specific
mention of "directories . . . and other compilations" in §5 of the 1909 Act. As
mentioned, this section had led some courts to conclude that directories were copy
rightable 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 purpose of the statutory definition is to emphasize that collections of facts
are not copyrightable per se. It conveys this message through its tripartite
structure. . . . The statute identifies three distinct elements and requires each to
be met for a work to qualifY as a copyrightable compilation: ( l ) the collection
and assembly of pre-existing material, facts, or data; ( 2 ) the selection, coordination,
or arrangement of those materials; and ( 3) the creation, by virtue of the particular

selection, coordination, or arrangement, of an "original" work of authorship . . . .
. . . It is not enough for copyright purposes that an author collects and assembles
facts. To satisfY the statutory definition, the work must get over two additional
hurdles. In this way, the plain language indicates that not every collection of facts
receives copyright protection. Otherwise, there would be a period after "data. " . . .
Not every selection, coordination, or arrangement will pass muster. This is plain
from the statute. It states that, to merit protection, the facts must be selected,
coordinated, or arranged "in such a way" as to render the work as a whole original.
This implies that some "ways" will trigger copyright, but that others will not . . . .
As discussed earlier, however, the originality requirement is not particularly
stringent. A compiler may settle upon a selection or arrangement that others
have used; novelty is not required. Originality requires only that the author make
the selection or arrangement independently (i.e., without copying that selection or
arrangement from another work), and that it display some minimal level of creativ
ity. Presumably, the vast majority of compilations will pass this test, but not all will.
There remains a narrow category of works in which the creative spark is utterly
lacking or so trivial as to be virtually nonexistent. Such works are incapable of sus
taining a valid copyright. Nimmer §2 . 0 1 [ 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 1 0 3 explains that "[t]he
subject matter of copyright . . . includes compilations," § 1 03 (a), but that copyright
protects only the author's original contributions-not the facts or information
conveyed:
·
The copyright in a compilation . . . extends only to the material contributed by the

author of such work, as distinguished from the preexisting material employed in the
work, and does not imply any exclusive right in the preexisting material. §l03 (b).
As § 103 makes clear, copyright is not a tool by which a compilation author may
keep others from using the facts or data he or she has collected . . . . The 1909 Act
did not require, as "sweat of the brow" courts mistakenly assumed, that each
subsequent compiler must start from scratch and is precluded from relying on
research undertaken by another. Rather, the facts contained in existing works
may be freely copied because copyright protects only the elements that owe their
origin to the compiler-the selection, coordination, and arrangement of facts.
In summary, the 1976 revisions to the Copyright Act leave no doubt that orig
inality, 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, § 1 02(a); that facts are never original, § 1 02(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, § 1 0 1 . . . .
III . . .
The selection, coordination, and arrangement of Rural's white pages do not

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

After Feist, just how minimal can an author's creative contribution be and still
qualifY as copyrightable? Photography and digital technology can capture reality in
exact detail. The following cases address originality in these contexts.
Mannion v. Coors Brewing Company

377 F. Supp. 2d 444 (S.D.N.Y 2006)
KAPLAN, J.: . . .
FACTS
Jonathan Mannion is a freelance photographer who specializes in portraits of

celebrity athletes and musicians in the rap and rhythm-and-blues worlds. In 1999 he
was hired by SLAM, a basketball magazine, to photograph basketball star Kevin
Garnett in connection with an article . . . . The article, entitled "Above the Clouds,"
appeared as the cover story of the December 1999 issue of the magazine. It was
accompanied by a number of Mannion's photographs of Garnett, including the one
at issue here (the "Garnett Photograph" ), which was printed on a two-page spread
introducing the article.
The Garnett Photograph . . . is a three-quarter-length portrait of Garnett against
a backdrop of clouds with some blue sky shining through. The view is up and across
the right side of Garnett's torso, so that he appears to be towering above earth. He
wears a white T-shirt, white athletic pants, a black dose-fitting cap, and a large amount
of platinum, gold, and diamond jewelry ("bling bling" in the vernacular), including
several necklaces, a Rolex watch and bracelet on his left wrist, bracelets on his right
wrist, rings on one finger of each hand, and earrings. His head is cocked, his eyes are
closed, and his heavily-veined hands, nearly all ofwhich are visible, rest over his lower
abdomen, with the thumbs hooked on the waistband of the trousers. The light is from
the viewer's left, so that Garnett's right shoulder is the brightest area of the
photograph and his hands cast slight shadows on his trousers. As reproduced in
the magazine, the photograph cuts off much of Garnett's left arm.
In early 200 1 , defendant Carol H. Williams Advertising ( "CHWA" ) began
developing ideas for outdoor billboards that would advertise Coors Light beer to
young black men in urban areas. One of CHWA's "comp boards"-a "comp
board" is an image created by an advertising company to convey a proposed
design-used a manipulated version of the Garnett Photograph and superimposed
on it the words "Iced Out" ( "ice" being slang for diamonds) and a picture of a can
of Coors Light beer (the "Iced Out Comp Board" ) . CHWA obtained authorization
from Mannion's representative to use the Garnett Photograph for this purpose.
The Iced Out Comp Board . . . used a black-and-white, mirror image of the
Garnett Photograph, but with the head cropped out on top and part of the fingers
cropped out below. CHWA forwarded its comp boards to, and solicited bids for the
photograph for the Coors advertising from, various photographers including Man
nion, who submitted a bid but did not receive the assignment.
Coors and CHWA selected for a Coors billboard a photograph (the "Coors
Billboard" ) . . . that resembles the Iced Out Comp Board. The Coors Billboard
depicts, in black-and-white, the torso of a muscular black man, albeit a model
other than Garnett, shot against a cloudy backdrop. The pose is similar to that in
the Garnett Photograph, and the view also is up and across the left side of the torso.
The model in the billboard photograph also wears a white T -shirt and white athletic
pants. The model's jewelry is prominently depicted; it includes a necklace of plat
inum or gold and diamonds, a watch and two bracelets on the right wrist, and more
bracelets on the left wrist. The light comes from the viewer's right, so that the left
shoulder is the brightest part of the photograph, and the right arm and hand cast
slight shadows on the trousers.
Mannion subsequently noticed the Coors Billboard at two locations in the Los
Angeles area. He . . . brought this action for infringement in February of
2004 . . . The parties each move for summary judgment.
.
Garnett Photograph
0@@
Iced Out Como Board Coors Billboard and Billboard Detail

DISCUSSION
DETERMINING THE PROTECTIBLE ELEMENTS OF THE GARNETT PHOTOGRAPH

The first question must be: in what respects is the Garnett Photograph
protectible?
1. Protectible Elements of Photographs . . .

It sometimes is said that "copyright in the photograph conveys no rights over
the subject matter conveyed in the photograph. " But this is not always true. It of
course is correct that the photographer of a building or tree or other pre-existing
object has no right to prevent others from photographing the same thing. That is
because originality depends upon independent creation, and the photographer did
not create that object. By contrast, if a photographer arranges or otherwise creates
the subject that his camera captures, he may have the right to prevent others from
producing works that depict that subject.
Almost any photograph "may claim the necessary originality to support a
copyright. " Indeed, ever since the Supreme Court considered an 1 882 portrait
by the celebrity photographer Napoleon Sarony of the 27 -year-old Oscar Wilde,
courts have articulated lists of potential components of a photograph's originality.
These lists, however, are somewhat unsatisfactory.
First, they do not deal with the issue, alluded to above, that the nature and
extent of a photograph's protection differs depending on what makes that
photograph original.
Second, courts have not always distinguished between decisions that a photog
rapher makes in creating a photograph and the originality of the final product.
Several cases, for example, have included in lists of the potential components of
photographic originality "selection of film and camera," "lens and .filter selection,"
and "the kind ofcamera, the kind offilm, [ and] the kind oflens. " Having considered
the matter fully, however, I think this is not sufficiently precise. Decisions about
film, camera, and lens, for example, often bear on whether an image is original. But
the fact that a photographer made such choices does not alone make the image
original. "Sweat of the brow" is not the touchstone of copyright. Protection derives
from the features of the work itself, not the effort that goes into it . . . .
A photograph may be original in three respects. They are not mutually exclusive.
a. Rendition
First, "there may be originality which does not depend on creation of the scene
or object to be photographed . . . and which resides [instead] in such specialties as
angle of shot, light and shade, exposure, effects achieved by means of filters, devel
oping techniques etc." I will refer to this type of originality as originality in the
rendition because, to the extent a photograph is original in this way, copyright
protects not what is depicted, but rather how it is depicted . . . .
b. Timing
A photograph may be original in a second respect. " [A] person may create a
worthwhile photograph by being at the right place at the right time. " I will refer to
this type of originality as originality in timing.
. . . A modern work strikingly original in timing might be Catch of the Day, by

noted wildlife photographer Thomas Mangelsen, which depicts a salmon that
appears to be jumping into the gaping mouth of a brown bear at Brooks Falls in
Katmai National Park, Alaska. An older example is Alfred Eisenstaedt's photograph
of a sailor kissing a young woman on VJ Day in Times Square, the memorability of
which is attributable in significant part to the timing of its creation.
Copyright based on originality in timing is limited by the principle that
copyright in a photograph ordinarily confers no rights over the subject matter.
Thus, the copyright in Catch ofthe Day does not protect against subsequent photo
graphs of bears feasting on salmon in the same location. Furthermore, if another
photographer were sufficiently skilled and fortunate to capture a salmon at the
precise moment that it appeared to enter a hungry bear's mouth-and others
have tried, with varying degrees of success-that photographer, even if inspired
by Mangelsen, would not necessarily have infringed his work because Mangelsen's
copyright does not extend to the natural world he captured.
In practice, originality in timing gives rise to the same type of protection as
originality in the rendition. In each case, the image that exhibits the originality,
but not the underlying subject, qualifies for copyright protection.
c. Creation of the Subject
The principle that copyright confers no right over the subject matter has an
important limitation. A photograph may be original to the extent that the photog
rapher created "the scene or subject to be photographed." This type of originality,
which I will refer to as originality in the creation of the subject, played an essential
role in Rogers v. Koons [960 F.2d 301 (2d Cir. 1 992 ) ] and Gross v. Seligman [ 2 1 2 F.
930 (2d Cir. 1 9 1 4 ) ] .
In Rogers, the court held that the copyright in the plaintiff's photograph Puppies,
which depicted a contrived scene of the photographer's acquaintance, Jim Scanlon,
and his wife on a park bench with eight puppies on their laps, protected against the
defendants' attempt to replicate precisely, albeit in a three dimensional sculpture,
the content of the photograph. Although the Circuit noted that Puppies was original
because the artist "made creative judgments concerning technical matters with his
camera and the use of natural light"-in other words, because it was original in the
rendition-its originality in the creation of the subject was more salient. The same is
true of the works at issue in Gross v. Seligman, in which the Circuit held that the
copyright in a photograph named Grace ofYouth was infringed when the same artist
created a photograph named Cherry Ripe using "the same model in the identical
pose, with the single exception that the young woman now wears a smile and holds a
cherry stem between her teeth."
* * * * * *
To conclude, the nature and extent of protection conferred by the copyright in a

photograph will vary depending on the nature of its originality. Insofar as a
photograph is original in the rendition or timing, copyright protects the image
but does not prevent others from photographing the same object or scene . . . .
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 work.
The photograph does not result from slavishly copying another work and therefore
is original in the rendition. Mannion's relatively unusual angle and distinctive lighting
strengthen that aspect of the photograph's originality. His composition-posing
man against sky-evidences originality in the creation of the subject. Furthermore,
Mannion instructed Garnett to wear simple and plain clothing and as much jewelry
as possible, and "to look 'chilled out."' His orchestration of the scene contributes
additional originality in the creation of the subject.
Of course, there are limits to the photograph's originality and therefore to the
protection conferred by the copyright in the Garnett Photograph. For example,
Kevin Garnett's face, torso, and hands are not original with Mannion, and Mannion
therefore may not prevent others from creating photographic portraits of Garnett.
Equally obviously, the existence of a cloudy sky is not original, and Mannion there
fore may not prevent others from using a cloudy sky as a backdrop.
The defendants, however, take this line of reasoning too far. They argue that it
was Garnett, not Mannion, who selected the specific clothing, jewelry, and pose.
In consequence, they maintain, the Garnett Photograph is not original to the extent
of Garnett's clothing, jewelry, and pose. They appear to be referring to originality in
the creation of the subject.
There are two problems with the defendants' argument. The first is that Man
nion 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, jew
elry, and pose viewed in isolation. It is the entire image-depicting man, sky, cloth
ing, and jewelry in a particular arrangement-that is at issue here, not its individual
components . . . .
Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc.

528 F.3d 1258 (lOth Cir. 2008)
GoRSUCH, J . : . . . [Toyota and its advertising agency, Saatchi & Saatchi, hired
Grace & Wild, Inc . , to supply digital models of Toyota's vehicles for its model-
6 5 . 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.
year 2004 advertising campaign. ] . . . G&W subcontracted with Meshwerks to

assist with two initial aspects of the project-digitization and modeling. Digitizing
involves collecting physical data points from the object to be portrayed. In the case
of Toyota's vehicles, Meshwerks took copious measurements of Toyota's vehicles
by covering each car, truck, and van with a grid of tape and running an articulated
arm tethered to a computer over the vehicle to measure all points of intersection in
the grid. Based on these measurements, modeling software then generated a digital
image resembling a wire-frame model. . . .
At this point, however, the on-screen image remained far from perfect and
manual "modeling" was necessary. Meshwerks personnel fine-tuned or, as the
company prefers it, "sculpted," the lines on screen to resemble each vehicle as
closely as possible. Approximately 90 percent of the data points contained in each
final model, Meshwerks represents, were the result not ofthe first-step measurement
process, but of the skill and effort its digital sculptors manually expended at the
second step. For example, some areas of detail, such as wheels, headlights, door
handles, and the Toyota emblem, could not be accurately measured using current
technology; those features had to be added at the second "sculpting" stage, and
Meshwerks had to recreate those features as realistically as possible by hand, based
on photographs. Even for areas that were measured, Meshwerks faced the challenge
of converting measurements taken of a three-dimensional car into a two
dimensional computer representation; to achieve this, its modelers had to sculpt,
or move, data points to achieve a visually convincing result. The purpose and prod
uct of these processes, after nearly 80 to l 00 hours of effort per vehicle, were two
dimensional wire-frame depictions of Toyota's vehicles that appeared three
dimensional on screen, but were utterly unadorned-lacking color, shading, and
other details. Attached to this opinion as Appendix A are sample screen-prints of one
of Meshwerks' digital wire-frame models.
With Meshwerks' wire-frame products in hand, G&W then manipulated the
computerized models by, first, adding detail, the result ofwhich appeared on screen
as a "tightening" of the wire frames, as though significantly more wires had been
added to the frames, or as though they were made of a finer mesh. Next, G&W
digitally applied color, texture, lighting, and animation for use in Toyota's
advertisements . . . .
[Meshwerks sued Toyota, Saatchi & Saatchi, and G&W, asserting that it had .
contracted for only a one-time use of its models and that subsequent, unauthorized
uses infringed its copyrights in the models. The district court granted defendants'
motion for summary judgment, and Meshwerks appealed.]
II . . .
A...
The parties focus most of their energy in this case on the question whether
Meshwerks' models qualifY as independent creations, as opposed to copies of
Toyota's handiwork. But what can be said, at least based on received copyright
doctrine, to distinguish an independent creation from a copy? And how might
that doctrine apply in an age of virtual worlds and digital media that seek to
mimic the "real" world, but often do so in ways that undoubtedly qualify as (highly)
original? . . .
[P]hotography was initially met by critics with a degree of skepticism: a
photograph, some said, "copies everything and explains nothing," and it was
debated whether a camera could do anything more than merely record the physical
world . . . . [ In Burrow-Giles] , the Court indicated [that] photographs are copyright
able, if only to the extent of their original depiction of the subject. Wilde's image
[was] not copyrightable; but to the extent a photograph reflects the photographer's
decisions regarding pose, positioning, background, lighting, shading, and the like,
those elements can be said to "owe their origins" to the photographer, making the
photograph copyrightable, at least to that extent.
As the Court more recently explained in Feist, the operative distinction is
between, on the one hand, ideas or facts in the world, items that cannot be copy
righted, and a particular expression of that idea or fact, that can be . . . . So, in the
case ofphotographs, for which Meshwerks' digital models were designed to serve as
practically advantageous substitutes, authors are entitled to copyright protection
only for the "incremental contribution," SHL Imaging, Inc. [ v. Artisan House,
Inc.], 1 1 7 F . Supp. 2d at 3 1 1 [(S.D .N.Y. 2000) ] (internal quotation omitted) ,
represented by their interpretation o r expression of the objects of their attention.
B
Applying these principles, evolved in the realm of photography, to the new
medium that has come to supplement and even in some ways to supplant it, we
think Meshwerks' models are not so much independent creations as (very good)
copies of Toyota's vehicles . . . .
l
Key to our evaluation of this case is the fact that Meshwerks' digital wire- frame
computer models depict Toyota's vehicles without any individualizing features: they
are untouched by a digital paintbrush; they are not depicted in front of a palm tree,
whizzing down the open road, or climbing up a mountainside. Put another way,
Meshwerks' models depict nothing more than un-adorned Toyota vehicles-the car
as car. See Appendix A. . . . [I]n short, its models reflect none of the decisions that
can make depictions ofthings or facts in the world, whether Oscar Wilde or a Toyota
Camry, new expressions subject to copyright protection.
The primary case on which Meshwerks asks us to rely actually reinforces this
conclusion. In Ets-Hokin v. Skyy Spirits, Inc., 225 F .3d 1 068 (9th Cir. 2000) ( Skyy I),
the Ninth Circuit was faced with a suit brought by a plaintiff photographer who
alleged that the defendant had infringed on his commercial photographs of a Skyy
brand vodka bottle. The court held that the vodka bottle, as a "utilitarian object,"
a fact in the world, was not itself (at least usually) copyrightable. Id. at 1 080 (citing
1 7 U.S.C. § 1 0 1 ) . At the same time, the court recognized that plaintiff's photos
reflected decisions regarding "lighting, shading, angle, background, and so forth,"
id. at 1 078, and to the extent plaintiff's photographs reflected such original con
tributions the court held they could be copyrighted. In so holding, the Ninth
Circuit reversed a district court's dismissal of the case and remanded the matter
for further proceedings, and Meshwerks argues this analysis controls the outcome
of its case.
But Skyy itells only halfthe story. The case soon returned to the court of appeals,
and the court held that the defendant's photos, which differed in terms of angle,
lighting, shadow, reflection, and background, did not infringe on the plaintiff's
copyrights. Ets-Hokin v. Skyy Spirits1 Inc.1 323 F.3d 763, 765 (9th Cir.2003)
( Skyy II). Why? The only constant between the plaintiff's photographs and the
defendant's photographs was the bottle itself, id. at 766, and an accurate portrayal
of the unadorned bottle could not be copyrighted . . . .
The teaching of Skyy I and II, then, is that the vodka bottle, because it did not
owe its origins to the photographers, had to be filtered out to determine what
copyrightable expression remained. And, by analogy-though not perhaps the
one Meshwerks had in mind-we hold that the unadorned images of Toyota's
vehicles cannot be copyrighted by Meshwerks and likewi�e must be filtered out.
To the extent that Meshwerks' digital wire-frame models depict only those
unadorned vehicles, having stripped away all lighting, angle, perspective, and
"other ingredients" associated with an original expression, we conclude that they
have left no copyrightable matter.
Confirming this conclusion as well is the peculiar place where Meshwerks stood
in the model-creation pecking order. On the one hand, Meshwerks had nothing to
do with designing the appearance of Toyota's vehicles, distinguishing them from
any other cars, trucks, or vans in the world. . . . On the other hand, how the models
Meshwerks created were to be deployed in advertising-including the backgrounds,
lighting, angles, and colors-were all matters left to those ( G & W, Saatchi, and 3D
Recon) who came after Meshwerks left the scene . . . . 8
It is certainly true that what Meshwerks accomplished was a peculiar kind of
copying. It did not seek to recreate Toyota vehicles outright-steel, rubber, and all ;
instead, it sought to depict Toyota's three-dimensional physical objects in a two
dimensional digital medium. But we hold, as many before us have already suggested,
that, standing alone, "[ t ]he fact that a work in one medium has been copied from a
work in another medium does not render it any the less a 'copy."' Nimmer on
Copyright §8.0 1 [B ] . After all, the putative creator who merely shifts the medium
in which another's creation is expressed has not necessarily added anything beyond
the expression contained in the original.
In reaching this conclusion, we do not for a moment seek to downplay the
considerable amount of time, effort, and skill that went into making Meshwerks'
. 8. We are not called upon to, and do not, express any view on the copyrightability of the work
products produced by those who employed and adorned Meshwerks' models.
digital wire-frame models. But, in assessing the originality of a work for which
copyright protection is sought, we look only at the final product, not the process,
and the fact that intensive, skillful, and even creative labor is invested in the process
of creating a product does not guarantee its copyrightability. See Feist, 499 U.S.
at 3 59-60 . . . .
2
Meshwerks' intent in making its wire-frame models provides additional support
for our conclusion. "In theory, the originality requirement tests the putative
author's state of mind: Did he have an earlier work in mind when he created his
own?" Paul Goldstein, Goldstein on Copyright §2 .2 . 1 . 1 . If an artist affirmatively
sets out to be unoriginal-to make a copy of someone else's creation, rather than to
create an original work-it is far more likely that the resultant product will, in fact, be
unoriginal. Of course, this is not to say that the accidental or spontaneous artist will
be denied copyright protection for not intending to produce art; it is only to say that
authorial intent sometimes can shed light on the question of whether a particular
work qualifies as an independent creation or only a copy.
In this case, the undisputed evidence before us leaves no question that Mesh
werks set out to copy Toyota's vehicles, rather than to create, or even to add, any
original expression. The purchase order signed by G & W asked Meshwerks to
"digitize and model" Toyota's vehicles, and Meshwerks' invoice submitted to
G & W for payment reflects that this is exactly the service Meshwerks performed.
Aplt's App. at 1 1 3, 1 1 5 . Meshwerks itself has consistently described digitization and
modeling as an attempt accurately to depict real-world, three-dimensional objects as
digital images viewable on a computer screen. See, e.g., id. at 369 ( "the graphic
sculptor is not intending to 'redesign' the product, he or she is attempting to depict
that object in the most realistic way" ) . . . .
Although we hold that Meshwerks' digital, wire-frame models are insufficiently

original to warrant copyright protection, we do not turn a blind eye to the fact that
digital imaging is a relatively new and evolving technology and that Congress
extended copyright protection to "original works of authorship fixed in any tangible
medium of expression, now known or later developed." 1 7 U.S.C. § 1 02(a) (emphasis
added) . . . .
Digital modeling can be, surely is being, and no doubt increasingly will be used
to create copyrightable expressions. Yet, just as photographs can be, but are not
per se, copyrightable, the same holds true for digital models. There's little question
that digital models can be devised of Toyota cars with copyrightable features,
whether by virtue of unique shading, lighting, angle, background scene, or other
choices. The problem for Meshwerks in this particular case is simply that the uncon
tested facts reveal that it wasn't involved in any such process . . . . For this reason, we
do not envision any "chilling effect" on creative expression based on our holding
today . . . .
...
-
Appendix A
NOTES AND QUESTIONS
I. How distinct are the different dimensions of originality described by the

decision in Mannion? Was the photograph in Burrow-Giles original in rendition,
original in creation of the subject, or both? Does assessment of originality in
"rendition" or "creation of the subject" violate the Bleistein nondiscrimination

principle? Should the Mannion taxonomy, or one like it, be used for other types
ofworks? Would it have been helpful in evaluating the lithographs in Bleistein? How
about the digital models in Meshwerks?
2. Is the decision in Meshwerks consistent with that in Alfred Bell? What explains
the different results in the two cases? Why aren't the features added by hand by
Meshwerks at the "sculpting" stage sufficient to establish originality?
3. Is it appropriate to consider intent in determining originality? Why, or why
not? If so, what type of intent is relevant? IfMeshwerks had created its digital models
for an art exhibit rather than for an advertising campaign, should the result change?
4. In Bridgeman Art Library, Ltd. v. Corel Corp., 36 F. Supp. 2d 1 9 1 (S.D.N.Y.
1 999) , Bridgeman had been authorized to prepare and sell color reproductions of
public domain paintings residing in museums and private collections. Corel alleg
edly copied Bridgeman's color transparencies to produce its own CD-ROM prod
uct. The court dismissed Bridgeman's copyright infringement claim, ruling that the
transparencies did not contain the required "distinguishable variation," but
reflected only "slavish copying." Do you agree with the court's conclusion? Why,
or why not?
Many photographs, including a large number in the public domain, are held in
private collections and made available to the public only as digital replicas. For
example, Corbis, a company founded by Bill Gates, acquired the Bettman Archive's
collection of 1 6 . 5 million photographs, including 3 0 years' worth of United
Press International photographs. To preserve the original photographs, Corbis
stores them in an underground, climate··controlled storage facility. Digital repro
ductions are available via license. Can Corbis copyright the digital images? Would it
make any difference to your answer if Corbis digitally watermarks each image? If
Corbis cannot copyright the images under the Copyright Act, should it be able to
place contractual restrictions on access to and use of them?
5. Is an Andy Warhol painting of a Campbell's soup can original? If yes, how
does it differ from the reproductions at issue in Bridgeman Art Library and
Meshwerks?
PROBLEMS
Consider whether and to what extent copyright would ( or should) protect the
following:
a. A photograph by acclaimed documentary photographer Walker Evans of riders
on the New York City subway.

b. Photographs on a restaurant menu depicting dishes available at the restaurant.
c. A digital photograph of a dining room table taken for the purpose of offering the
table for sale on craigslist.org.

d. A live broadcast of the Super Bowl, recorded simultaneously with its
transmission.
3 . The "Idea/Expression Distinction"
The third requirement for copyrightable subject matter is a negative one:

Certain items are categorically excluded from receiving copyright protection.
According to § 1 02(b) of the Act: "In no case does copyright protection for an
original work of authorship extend to any idea, procedure, process, system, method
of operation, concept, principle, or discovery, regardless of the form in which it is
described, explained, illustrated, or embodied in such work." 1 7 U.S.C. § 1 02(b).
Many countries' laws have similar provisions, and the rule mandating exclusion of
certain items from copyright protection also is expressly recognized in international
copyright agreements. Both the TRIPS Agreement and WIPO Copyright Treaty
specifY that copyright protection extends "to expressions and not to ideas, proce
dures, methods of operation or mathematical concepts as such." TRIPS, art. 9(2 );
WIPO Copyright Treaty, art . 2.
Courts and commentators often describe § 1 02(b) as implementing a venerable
precept of copyright law: An idea can never be copyrightable, but its expression may
be. In fact, § 1 02(b) seems to have two purposes: ( 1 ) to define the line between what
is eligible for copyright protection and what belongs to the public domain; and
( 2 ) to define the line between copyrightable and patentable subject matter.
The phrase "idea/expression distinction" is thus shorthand for a rule requiring
the exclusion of a variety of elements of a work from copyright protection.
Both economic and noneconomic approaches to copyright view the items listed
in § 1 02(b) as basic building blocks of copyrightable expression, and hold that
granting copyright in these items would be counterproductive. Consider, for
example, the idea of a pair of doomed lovers whose families oppose their marriage,
or the scientific concepts embodied in Einstein's theory ofrelativity, or the steps that
need to be performed to change a tire or bake an apple pie. Would it be efficient to
give exclusive rights in any of these "ideas" to the first person to write about it?
Would it be fair, or morally justifiable, to do so?
While the goal of protecting "expression" rather than "idea" is simple enough
to state, implementing it in practice is much harder. As in the case of § 1 02(a)'s
originality requirement, the legislative history of § 1 02(b) is somewhat vague, indi
cating primarily that the provision was intended to continue the status quo: "Section
1 02(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 expres
sion and idea remains unchanged. " H.R Rep. No. 94- 1 476, 94th Cong., 2d Sess.
57 ( 1976), reprinted in 1976 U .S.C.C.A.N. 5659, 5 670. Once again, therefore, the
courts must develop their own guiding principles. As you read the cases in this
section, keep § 102(b )'s twofold purpose in mind, and think about whether that
helps to explain the results in particular cases that might otherwise seem difficult to
understand.
a. The Classic Case

The landmark Supreme Court decision on the "idea/expression distinction" is
Baker v. Selden, 1 0 1 U.S. 99 ( 1 879) . Indeed, the legislative history of § 1 02(b)
A. The Elements of Copyrightable Subject Matter · 91
indicates that Congress intended § 1 02 ( b ) in part to codifY the holding of Baker.

H.R. Rep. No. 94- 1476, 94th Cong., 2d Sess. 57 ( 1976), reprinted in 1 976
U.S.C.C.A.N. 5659, 5670. As you read the case, try to identifY where the Court
draws the line between copyrightable and uncopyrightable subject matter.
Baker v. Selden
1 01 u. s. 99 (1879)
BRADLEY, J . : Charles Selden, the testator of the complainant in this case, in the year
1 859 took the requisite steps for obtaining the copyright of a book, entitled "Sel
den's Condensed Ledger, or Book-keeping Simplified," the object of which was to
exhibit and explain a peculiar system of book-keeping. In 1 860 and 1 86 1 , 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 ofthese copyrights. The latter, in his answer, denied that
Selden was the author or designer of the books, and denied the infringement
charged, and contends on the argument that the matter alleged to be infringed is
not a lawful subject of copyright . . . .
The book or series of books of which the complainant claims the copyright
consists of an introductory essay explaining the system of book-keeping referred
to, to which are annexed certain forms or blanks, consisting of ruled lines, and
headings, illustrating the system and showing how it is to be used and carried
out in practice. This system effects the same results as book-keeping by double
entry; but, by a peculiar arrangement of columns and headings, presents the entire
operation, of a day, a week, or a month, on a single page, or· on two pages facing each
other, in an account-book. The defendant uses a similar plan so far as results are
concerned; but makes a different arrangement of the columns, and uses different
headings. If the complainant's testator had the exclusive right to the use of the
system explained in his book, it would be difficult to contend that the defendant
does not infringe it, notwithstanding the difference in his form of arrangement; but
if it be assumed that the system is open to public use, it seems to be equally difficult
to contend that the books made and sold by the defendant are a violation of the
copyright of the complainant's book considered merely as a book explanatory of the
system. Where the truths of a science or the methods of an art are the common
property of the whole world, any author has the right to express the one, or explain
and use the other, in his own way. As an author, Selden explained the system in a
particular way. It may be conceded that Baker makes and uses account-books
arranged on substantially the same system; but the proof fails to show that he has
violated the copyright of Selden's book, regarding the latter merely as an explana
tory 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 ofbook-keeping can be claimed, under the law of copyright, by
means of a book in which that system is explained? The complainant's bill, and the
case made under it, are based on the hypothesis that it can be . . . .
There is no doubt that a work on the subject of book-keeping, though only
explanatory ofwell-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, con
veying information on the subject of book-keeping, and containing detailed expla
nations 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 ofthe art or thing described or explained has nothing to do with
the validity of the copyright. To give to the author of the book an exclusive property
in the art described therein, when no examination of its novelty has ever been
officially made, would be a surprise and a fraud upon the public. That is the province
ofletters-patent, not of copyright. The claim to an invention or discovery of an art or
manufacture must be subjected to the examination of the Patent Office before an
exclusive right therein can be obtained; and it can only be secured by a patent from
the government. . . .
. . . The very object of publishing a book on science or the useful arts is to
communicate to the world the useful knowledge which it contains. But this object
would be frustrated if the knowledge could not be used without incurring the
guilt of piracy of the book. And where the art it teaches cannot be used without
employing the methods and diagrams used to illustrate the book, or such as are
similar to them, such methods and diagrams are to be considered as necessary

incidents to the art, and given therewith to the public; not given for the purpose
of publication in other works explanatory of the art, but for the purpose of practical
application.
Of course, these observations are not intended to apply to ornamental designs,
or pictorial illustrations addressed to the taste. Of these it may be said, that their
form is their essence, and their object, the production of pleasure in their contem
plation. This is their final end. They are as much the product of genius and the result
of composition, as are the lines of the poet or the historian's periods. On the other
hand, the teachings of science and the rules and methods of useful art have their final
end in application and use; and this application and use are what the public derive
from the publication of a book which teaches them. But as embodied and taught in a
literary composition or book, their essence consists only in their statement. This
alone is what is secured by the copyright. The use by another of the same methods of
statement, whether in words or illustrations, in a book published for teaching the
art, would undoubtedly be an infringement of the copyright.
Recurring to the case before us, we observe that Charles Selden, by his books,
explained and described a peculiar system of book-keeping, and illustrated his
method by means of ruled lines and blank columns, with proper headings on a
page, or on successive pages. Now, whilst no one has a right to print or publish
his book, or any material part thereof, as a book intended to convey instruction in
the art, any person may practise and use the art itself which he has described and
illustrated therein. The use of the art is a totally different thing from a publication of
the book explaining it. The copyright of a book on book-keeping cannot secure the
exclusive right to make, sell, and use account-books prepared upon the plan set forth
in such book. Whether the art might or might not have been patented, is a question
which is not before us. It was not patented, and is open and free to the use of the
public. And, of course, in using the art, the ruled lines and headings of accounts
must necessarily be used as incident to it.
The plausibility of the claim put forward by the complainant in this case arises
from a confusion of ideas produced by the peculiar nature of the art described in the
books which have been made the subject of copyright. In describing the art, the
illustrations and diagrams employed happen to correspond more closely than usual
with the actual work performed by the operator who uses the art. Those illustrations
and diagrams consist of ruled lines and headings of accounts; and it is similar ruled
lines and headings of accounts which, in the application of the art, the book-keeper
makes with his pen, or the stationer with his press; whilst in most other cases the
diagrams and illustrations can only be represented in concrete forms ofwood, 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 explana
tion; 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 . . . .
I B I I E I ' S f O I JI. I
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NOTES AND QUESTIONS
l . What exactly is the Baker holding? What (if anything) in Selden's book is
copyrightable and what is not?
2. While Baker is often cited as the foundational case establishing the idea/
expression distinction, does it in fact do so? According to Professor Pamela Samuel
son, "[T]he main message the Court was trying to convey was that bookkeeping
systems and other useful arts were beyond the scope of copyright protection in any
text that might explain them or any drawing that might illustrate them." Pamela
Samuelson, Why Copyright Excludes Systems and Processes from the Scope of Its Pro
tection, 8 5 Tex. L. Rev. 192 1 , 1 926 (2007) . Do you agree? Examine § 1 02(b) again.
Which ofthe listed items are most closely related to the Baker Court's holding? Does
Baker mean that the more useful a work is, the less likely it is to be copyrightable? If
courts interpret Baker in the way that Professor Samuelson recommends, will they
inevitably have to evaluate artistic merit?
3. In Baker the defendant was a direct competitor of the copyright holder.
Should that matter to the copyright analysis?
4. Section 1 0 1 of the Patent Act defines patentable subject matter to include
"any new and useful process" that meets the statute's requirements. Selden's book
keeping system could be considered a process, but courts during Selden's time most
likely would have held the system unpatentable based on a judicially created doctrine
excluding business methods from patent protection. In Bilski v. Kappos, 561 U.S.
593 (201 0), the Court held that "the Patent Act leaves open the possibility that
there are at least some processes that can be fairly described as business methods that
are within patentable subject matter under § 1 0 1 ." Id. at 609.
Note on the Merger Doctrine and Thin Copyright
Closely related to the exclusionary principle expressed in § 1 02(b) is the doctrine

of merger: Where only one or a limited number of ways exist to express an idea, the
idea and expression merge, and copyright cannot be used to prevent another from
using the same or similar expression. The merger doctrine commands universal
agreement, but courts differ in the way they apply it. Some decisions treat merger
as a bar to copyrightability. For example, in Morrissey v. Procter & Gamble Co., 379
F.2d 675 ( 1st Cir. 1967), the court held that instructions for a sweepstakes contest
could not be copyrighted:
When the uncopyrightable subject matter i� very narrow, so that"the topic necessarily
requires" ... if not only one form of expression, at best only a limited number, to
permit copyrighting would mean that a party or parties, by copyrighting a mere hand
ful of forms, could exhaust all possibilities of future use of the substance. In such
circumstances it does not seem accurate to say that any particular form of expression
comes from the subject matter. However, it is necessary to say that the subject matter
would be appropriated by permitting the copyrighting of its e xpression. We cannot
recognize copyright as a game of chess in which the public can be checkmated. Cf.
Baker v. Selden . . . .
379 F.2d at 679 . According to others, the doctrine supplies a defense to copyright
infringement liability. See, e.g., Kregos v. Associated Press, 937 F.2d 700, 705 (2d Cir.
1 99 1 ) ( "Assessing merger in the context of alleged infringement will normally
provide a more detailed and realistic basis for evaluating the claim that protection
of expression would invariably accord protection to an idea." ) .
Sometimes, there are more than a few ways to express an idea, but the scope for
variation is quite limited. In such cases, a court may conclude that the particular
expression is copyrightable but that the scope of the copyright is "thin"-so thin
that infringement only occurs in the case of a virtually identical copy. See, e.g.,
Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 8 86 F .2d 1 173, 1 1 75 (9th
Cir. 1 989 ) ( "Where an idea and the expression 'merge,' or are 'inseparable,' the
expression is not given copyright protection . . . . In addition, where an expression is,
as a practical matter, indispensable, or at least standard, in the treatment of a given
idea, the expression is protected only against verbatim, or virtually identical
copying. " ) .
Finally, note that in its regulations, the Copyright Office has indicated its view
that certain items should always be excluded from copyright protection:
§202. 1 Material not subject to copyright

The following are examples of works not subject to copyright and applications
for registration of such works cannot be entertained:
(a) Words and short phrases such as names, titles, and slogans; familiar sym
bols or designs; mere variations of typographic ornamentation, lettering or col
oring; mere listing of ingredients or contents;
(b) Ideas, plans, methods, systems, or devices, as distinguished from the
particular manner in which they are expressed or described in a writing;
(c) Blank forms, such as time cards, graph paper, account books, diaries, bank
checks, scorecards, address books, report forms, order forms and the like, which
are designed for recording information and do not in themselves convey
information;
(d) Works consisting entirely ofinformation that is common property contain
ing no original authorship, such as, for example: Standard calendars, height and
weight charts, tape measures and rulers, schedules of sporting events, and lists or
tables taken from public documents or other common sources.
(e) Typeface as typeface.
37 C.P.R. §202 . 1 .
NOTES AND QUESTIONS
l . What are the practical differences, if any, to litigants of the different

approaches to the merger doctrine? What incentives does the "thin copyright"
approach create?
2. Section 1 02(b) explains some, but not all, of the items on the Copyright
Office's list of excluded items. Does the merger doctrine explain all of the others?
PRACTICE EXERCISE: COUNSEL A CLIENT

If Selden's book were still under copyright, how would you advise a client who
wanted to do the following:
a. implement an accounting system requiring the client to use exact copies of the
forms;
b. publish a book of blank forms containing exact copies of Selden's forms;
c. publish a book comparing different accounting systems, and including ( i) a
description of Selden's system, ( ii) exact copies of the forms, and ( iii) examples of
how to modifY the forms to meet different needs.
b. Complications
Baker and § 1 02(b) might be read to suggest that information separates neatly
into three categories: copyrightable, patentable, and public domain. The reality is
more complicated. As we noted at the outset ofthis section, the phrase "idea/expres
sion distinction" is shorthand for a rule requiring the exclusion ofa variety ofelements
of a work from copyright protection. Within copyright law, the conceptual difficulties
in separating those elements from protectable expression can be substantial.
We begin by considering the line between fact and fiction. Some works blend the
two, making the scope of copyright protection in such works difficult to assess.
Many nonfictional historical works, meanwhile, include some material that rests,
at least in part, on hypothesis or conjecture . Additionally, many expressive works,
both fictional and nonfictional, employ standard expressions to conjure up certain
images. Does copyright bar duplication of such expressions? Consider what the next
case has to say about these questions.
A.A. Hoehling v. Universal City Studios, Inc.

618 F.2d 972 (2d Cir.), cert. denied, 449 U.S. 841 (1980)
KAUFMAN, C.J. : A grant of copyright in a published work secures for its author a
limited monopoly over the expression it contains. The copyright provides a financial
incentive to those who would add to the corpus of existing knowledge by creating
original works. Nevertheless, the protection afforded the copyright holder has never
extended to history, be it documented fact or explanatory hypothesis. The rationale
for this doctrine is that the cause of knowledge is best served when history is the
common property of all, and each generation remains free to draw upon the dis
coveries 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 introduc
tion, 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 pas
sengers from the Third Reich to the United States, exploded into flames and dis
integrated 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 crew were killed but,
fortunately, 52 persons survived. Official investigations conducted by both
American and German authorities could ascertain no definitive cause of the disaster,
but both suggested the plausibility of static electricity or St. Elmo's Fire, which
could have ignited the highly explosive hydrogen that filled the airship.
Throughout, the investigators refused to rule out the possibility of sabotage . . . .
The final pages of the airship's story marked the beginning of a series of jour
nalistic, historical, and literary accounts devoted to the Hindenburg and its fate.
Indeed, weeks of testimony by a plethora ofwitnesses 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 1 962, Dale Titler released Wings ofMystery, 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 con
ducted interviews with survivors of the crash as well as others who possessed infor
mation about the Hindenburg. His book is presented as a factual account, written in
an objective, reportorial style.
l. Titler's account was published after the release of appellant's book. In an affidavit in this
litigation, Titler states that he copied Hoehling's theory of sabotage. Hoehling, however, has never
instituted a copyright action against Titler.
l 00 2. Requirements for Copyright Protection
The first half recounts the final crossing of the Hindenburg, from Sunday,
May 2 , when it left Frankfurt, to Thursday, May 6, when it exploded at Lakehurst.
Hoehling describes the airship, its role as an instrument of propaganda in Nazi
Germany, its passengers and crew, the danger ofhydrogen, and the ominous threats
received by German officials, warning that the Hindenburg would be destroyed.
The second portion, headed The Quest, sets forth the progress of the official inves
tigations, 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 c ould have destroyed the Hindenburg to please his ladyfriend,
a suspected communist dedicated to exploding the myth of Nazi invincibility.
Ten years later appellee Michael MacDonald Mooney published his book, The
Hindenburg. Mooney's endeavor might be characterized as more literary than his
torical 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 oftechnology, 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 suc
ceeded in negotiations to sell the motion picture rights to appellee Universal City
Studios. Universal then commissioned a screen story by writers Levinson and Link,
best known for their television series, Columbo, in which a somewhat disheveled, but
wise detective unravels artfully conceived murder mysteries. In their screen story,
Levinson and Link created a Columbo-like character who endeavored to identify the
saboteur on board the Hindenburg. Director Robert Wise, however, was not
satisfied with this version, and called upon Nelson Gidding to write a final screen
play. 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 ofsabotage threats, station a Luftwaffe intelligence officer on
the-zeppelin, loosely resembling a Colonel Erdmann who was aboard the Hinden
burg. 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 fil m's subplots involve other possible suspects,
including a fictional countess who has had her estate expropriated by the Reich,
two fictional confidence men wanted by New York City police, and an advertising
executive rushing to close a business deal in America . . . .
[Hoehling sued Universal and Mooney for copyright infringement. The district
court granted summary judgment in favor of the defendants . ]
II . . . .
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 . . . .
[A]ppellees . . . argue that Hoehling's plot is an "idea," and ideas are not copy
rightable as a matter oflaw. See Sheldon v. Metro-Goldwyn Pictures Corp., 8 1 F .2d 49,
54 (2d Cir. ), cert. denied, 298 U.S. 669 . . . .
Hoehling, however, correctly rejoins that while ideas themselves are not subject
to copyright, his "expression" of his idea is copyrightable. Id. at 54 . . . .
. . . But, where, as here, the idea at issue is an interpretation of an historical
event, our cases hold that such interpretations are not copyrightable as a matter
oflaw. In Rosemont Enterprises, Inc. v. Random House, Inc., 366 F .2d 303 (2d Cir.
1966), cert. denied, 385 U.S. 1 009 . . . , we held that the defendant's biography of
Howard Hughes did not infringe an earlier biography of the reclusive alleged bil
lionaire. Although the plots ofthe 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,
1 02 2 . Requirements for Copyright Protection
broad latitude must be granted to subsequent authors who make use of historical
subject matter, including theories or plots. Learned Hand counseled in Myers v.
Mail & Express Co., 36 C.O. Bull. 478, 479 (S.D.N.Y. 1919), "[t]here cannot
be any such thing as copyright in the order ofpresentation of the facts, nor, indeed,
in their selection. "5
In the instant case, the hypothesis that Eric Spehl destroyed the Hindenburg is
based entirely on the interpretation of historical facts, including Spehl's life, his
girlfriend's anti-Nazi connections, the explosion's origin in Gas Cell 4, Spehl's
duty station, discovery of a dry-cell battery among the wreckage, and rumors
about Spehl's involvement dating from a 1938 Gestapo investigation. Such an his
torical interpretation, whether or not it originated with Mr. Hoehling, is not pro
tected 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 69 1 . Each appellee had the right to "avail himselfofthe facts contained" in
Hoehling's book and to "use such information, whether correct or incorrect, in his
own literary work." Greenbie v. Noble, 1 5 1 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 Pub
lications Corp., 1 8 1 F.2d 664, 667 ( 7th Cir. 1950); Miller v. Universal City Studios,
Inc., 460 F. Supp. 984 (S.D. Fla. 1 978 ) . Indeed, this circuit has clearly repudiated
Toksvig and its progeny. In Rosemont Enterprises, Inc., supra, 366 F.2d at 3 1 0, we
refused to "subscribe to the view that an author is absolutely precluded from saving
5 . This circuit has permitted extensive reliance on prior works of history. See, e.g., Gardner v.
Nizer, 391 F. Supp. 940 (S.D.N.Y. 1975 ) (the story of the Rosenberg trial not copyrightable); Fuld v.
National Broadcasting Co., 390 F. Supp. 8 77 (S.D.N.Y. 1975) ( "Bugsy" Siegel's life story not copy
rightable); Greenbie v. Noble, 1 5 1 F. Supp. 45 (S.D.N.Y. 1957) (the life ofAnna 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 . l l [A] ( 1979); Chafee, Reflections on the Law of Copyright: I, 45 Colum. L.
Rev. 503, 5 1 1 ( 1945 ).
6. In detailed comparisons of his book with Mooney's work and Universal's motion picture,
Hoehling isolates 266 and 75 alleged instances of copying, respectively: Judge Metzner correctly
pointed out that many of these allegations are patently frivolous. The vast majority of the remainder
deals with alleged copying of historical facts. It would serve no purpose to review Hoehling's specific
allegations in detail in this opinion. The following ten examples, however, are illustrative: ( l ) Eric
Spehl's age and birthplace; (2) Crew members had smuggled monkeys on board the GrafZeppelin; ( 3 )
Germany's ambassador t o the U.S. dismissed threats o f sabotage; ( 4 ) A warning letter had been
received from a Mrs. Rauch; ( 5) The Hindenburg's captain was constructing a new home in Zeppe
linheim; (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 ( 1 0 ) The navigator set the Hindenburg's course by reference to various North Atlantic
islands.
A. The Elements of Copyrightable Subject Matter I 03
time and effort by referring to and relying upon prior published material . . . . It is
just such wasted effort that the proscription against the copyright of ideas and
facts . . . are designed to prevent. " Accord, 1 Nimmer on Copyright §2. 1 1 ( 1979 ) .
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 ofthe 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 [v. Haley], 460 F. Supp. [40, 45 S.D.N.Y. 1977);
accord, Bevan v. Columbia Broadcasting System, Inc., 329 F. Supp. 601 , 607
(S.D.N.Y. 1971 ) . Because it is virtually impossible to write about a particular his
torical era or fictional theme without employing certain "stock" or standard literary
devices, we have held that scenes ci faire are not copyrightable as a matter of law.
See Reyher v. Children's Television Workshop, 533 F.2d 87, 9 1 (2d Cir.), cert. denied,
429 U.S. 980 ( 1976) . . . .
D
All of Hoehling's allegations of copying, therefore, encompass material that is
non-copyrightable as a matter oflaw, rendering summary judgment entirely appro
priate. We are aware, however, that in distinguishing between themes, facts, and
scenes ci 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 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., 5 5 8 F.2d 91 (2d
Cir. 1977), cert. denied, 434 U .S . 1 0 1 4 . . . . 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. B. C. Publications, Inc., 329 F.2d 541 , 543-44 (2d
Cir. ), cert. denied, 379 U.S. 822 ( 1 964) . . . . Knowledge is expanded as well by
granting new authors of historical works a relatively free hand to build upon the
work of their predecessors . . . .
NOTES AND QUESTIONS
l . Why should the plot of a fictional work receive copyright protection? Why
isn't it enough for copyright to extend only to the literal textual wording?
2. Examine the text of §l02(b) again. Which word or words in the statute
exclude facts from copyright protection? According to the Feist Court:
[ t]o borrow from Burrow-Giles, one who discovers a fact is not its "maker" or
"originator." . . . 'The discoverer merely finds and records." Census takers, for
example, do not "create" the population figures that emerge from their efforts; in a
sense, they copy these figures from the world around them . . . . The same is true of all
facts-scientific, historical, biographical, and news of the day. "[T] hey may not be
copyrighted and are part of the public domain available to every person."
Feist, 499 U.S. at 347-48 . Are historical theories also "discoveries"? Are historians
less creative than painters or novelists? Should a work that is held out to the public as
a work of historical fiction receive stronger copyright protection than a work that is
held out to the public as a work of history?
3. The Hoehling court notes that it is attempting to avoid the wasted effort
incurred when a second comer is required to research factual events anew. How is
this wasted effort any different from that discussed in Question 2, Section A.2 .9
supra, in which two artists each had to travel to Colorado to depict the same
landscape? Each was free to copy the original but the second artist was not free
to copy the copy painted by the first. Why doesn't the same rule apply to historical
facts? Why doesn't it apply to historical theories?
Note that historians are subject to separate ethical norms that prohibit plagia
rism and require citation of sources. Do these norms serve the same purposes that
copyright law serves?
4. The merger doctrine applies when it is necessary to copy expression because
the underlying idea may not be effectively expressed in another way. The doctrine of
scenes a faire protects a second comer's use of literary devices that are not literally
necessary to express an idea, but that the audience has come to expect. What are the
justifications for these doctrines? Are they equally compelling?
Next, we consider how the law should separate unprotectable systems or pro
cesses from copyrightable expression. Many industries develop new approaches to
classifying information. When, if ever, are the results of such efforts copyrightable?
Put differently, is §l02(b) simply an elaboration of § l 02(a) or does it add
something-i.e., could there be subject matter that qualifies for copyright protec
tion under §l 02( a) (because it is sufficiently original), but that nevertheless is
excluded by § l 02(b)?
ATC Distribution Group, Inc. v. Whatever It Takes

Transmissions & Parts, Inc.
402 F.3d 700 (6th Cir. 2005)
Opinion
BoGGs, C.J.
[ATC, a company selling transmission parts, had purchased another firm's
assets, including a catalog with illustrations and a numbering system for transmis
sion parts. Kenny Hester, a former ATC employee, formed his own competitive
company, Whatever It Takes Transmissions ("WITT") . Hester obtained an elec
tronic version of the catalog and developed a similar one. ATC sued for copyright
infringement and the court granted summary judgment for WITT. This appeal
followed. ]
II
We review a district court's order granting summary judgment de novo, and its
findings of fact for clear error.
A. Copyright infringement. . . .
ATC claims that WITT and Hester infringed its copyrights in the parts catalog,
the individual part numbers contained in the catalog, the illustrations contained in
the catalog, and its self-described "Numbering System Manual." Appellees do not
contest the allegation that they copied these works and items. Rather, they raise the
affirmative defense that . . . none of the works or items listed are eligible for
copyright protection.
The district court . . . agreed that the catalog, part numbers, illustrations, and
the manual lacked the originality required for copyright protection, and that Appel
lees' admitted copying of these works and items could not have constituted
copyright infringement as a matter of law. The district court therefore held that
Appellees were entitled to summary judgment on ATC's claim of copyright
infringement . . . . [W]e agree . . . .
l . Catalog and Part Numbers .

. . . ATC argues that its catalog is a creative classification scheme, or taxonomy,
which sorts parts into categories and sub-categories, and allocates numbers to each
part. Under this theory, the individual part numbers would be protected as the
copyrightable expressions of the overall taxonomy . . . .
ATC's parts-classification scheme divides transmission parts into a series of cat
egories and sub-categories. There are three basic categories: brand, transmission
1 06 2. Requirements for Copyright Protection
type, and type of part. In addition, a suffix field is available to further sub-divide a
particular part when appropriate. Within each category, several sub-categories have
been created. In the brand category the sub-categories are relatively obvious: the
transmissions are listed by manufacturer. In the part category the sub-categories are
less obvious, and require decisions such as whether to have a single category of rings,
of which some are sealing rings and some are 0-rings, or to have two distinct
categories, sealing rings and 0-rings. Each of the three basic categories and the
optional suffix are represented in each part number by a two-digit or three-digit
field (with the occasional letter), within which the transmission types or parts are
numbered in order, with gaps being left in each sub-category to accommodate
new parts in the future. Although all parts within a sub-category are numbered
sequentially, the ordering of the sub-categories within a field, or the parts within
a sub-category appears to be random . As such, the fact that an "0-ring pump" and
an "0-ring pump bolt" are in the same general range ofnumbers is no accident. But
the fact that 0-rings in general are numbered in the 300's, and the fact that these
two parts are numbered 3 1 1 and 3 1 2 rather than 341 and 342, are accidental. Each
discrete transmission part will have a number that is between five and nine digits
and/or letters.
ATC claims that its numbering scheme involves several different types of crea
tivity: ( 1 ) deciding what kind of information to convey in part numbers; ( 2 ) pre
dicting· future developments in the transmission parts industry and deciding how
many slots to leave open in a given sub-category to allow for those developments;
( 3 ) deciding whether an apparently novel part that does not obviously fit in any of
the existing classifications should be assigned a new category of its own or placed in
an existing category, and, if the latter, which one; ( 4) designing the part numbers;
and ( 5 ) devising the overall taxonomy of part numbers that places the parts into
different categories. An example of this last type of creativity would be the decision
to include in the catalog entries for "Pressure Plate, Intermediate (Top)" (assigned
number 1 44) and "Pressure Plate, Intermediate (Bottom) " ( 145), as opposed to
using one unitary entry for "Pressure Plate, Intermediate," but adding a suffix to
that part number that differentiates between top ( 1 44 1 ) and bottom ( 1 442) plates.
a. The ATC Catalog as a Taxonomy.

Classification schemes can in principle be creative enough to satisfY the origi
nality requirement of copyright protection. See Am. Dental Ass)n v. Delta Dental
Plans Ass)n, 126 F.3d 977, 979 ( 7th Cir. 1 997) ( "Facts do not supply their own
principles of organization. Classification is a creative endeavor . . . . There can be
multiple, and equally original, biographies of the same person's life, and multiple
original taxonomies of a field of knowledge. " ) . None of ATC's claimed creative
endeavors seem particularly creative when compared to a great painting or novel, but
the Supreme Court has made clear that only a bare minimum amount of creativity is
required to satisfY the constitutional originality requirement. See Feist, 499 U.S.
at 345 . At least some of the decisions made by ATC are arguably "non-obvious
choices" made from "among more than a few options." See Matthew Bender &
Co. v. West PubPg Co., 1 5 8 F.3d 674, 682 (2d Cir. 1 998 ) .
A. The Elements of Copyrightable Subject Matter l 07
Original and creative ideas, however, are not copyrightable, [under] 17 U.S.C.
§102(b ) . . . . And all ofthe creative aspects ofthe ATC classification scheme are just
that: ideas. ATC cannot copyright its prediction of how many types of sealing ring
will be developed in the future, its judgment that 0-rings and sealing rings should
form two separate categories of parts, or its judgment that a new part belongs with
the retainers as opposed to the pressure plates.
The expression of ATC's ideas about part classification and the future of the
transmission parts market is not barred from copyright protection by the idea
expression distinction. It is barred, however, in part by the "merger doctrine,"
and in part by the originality requirement. For almost all of the types of creativity
claimed by ATC, there is only one reasonable way to express the underlying idea. For
example, the only way to express the prediction that a maximum of four additional
types of sealing ring might be developed is to leave four numbers unallocated, and
the only way to express the idea that a novel part should be placed with the sealing
rings rather than with the gaskets is to place that part with the sealing rings. Under
the merger doctrine, "when there is essentially only one way to express an idea, the
idea and its expression are inseparable [i.e., they merge,] and copyright is no bar to
copying that expression. " Kobus v. Mario!, 328 F .3d 848, 856 (6th Cir.2003)
( alteration in original, internal citation omitted).
The only aspect of the numbering system that does not merge with the under
lying idea is the allocation of numbers to each sub-category, and ultimately to each
part. ATC argues that its individual part numbers are copyright protected as expres
sions ofthe catalog as a whole, and cites as authority the Seventh Circuit's holding in
American Dental, which held that the American Dental Association's Code on
Dental Procedures and Nomenclature was copyrightable. See 126 F.3d at 979 .
The Code classified dental procedures into groups, with each procedure receiving
a number, a short description, and a long description. Id. at 977 . . . . The Seventh
Circuit held that the numbers assigned to each procedure were copyrightable, in
addition to the long and short descriptions of each procedure. Id. at 979.
The American Dental court's rationale for holding that the individual proce-
dure numbers were copyrightable is rather opaque:
Number 04267 reads "guided tissue regeneration-nonresorbable barrier, per site, per
tooth" but could have read "regeneration of tissue, guided by nonresorbable barrier,
one site and tooth per entry." Or "use ofbarrier to guide regeneration of tissue, without
regard to the number of sites per tooth and whether or not the barrier is resorbable."
The first variation is linguistic, the second substantive; in each case the decision to use the
actual description is original to the ADA, not knuckling under to an order imposed on
language by some "fact" about dental procedures. B lood is shed in the ADA's commit
tees about which description is preferable. The number assigned to any one of the three
descriptions could have had four or six digits rather than five; guided tissue regeneration
could have been placed in the 2500 series rather than the 4200 series; again any of these
choices is original to the author of a taxonomy, and another author could do things
differently.Every number in the ADA's Code begins with zero, assuring a large supply of
unused numbers for procedures to be devised or reclassified in the future; an author
could have elected instead to leave wide gaps inside the sequence.A catalog that initially
assigns 04266, 04267, 04268 to three procedures will over time depart substantively
from one that initially assigns 42660, 42670, and 42680 to the same three procedures.
So all three elements of the Code- numbers, short descriptions, and long descriptions,
are copyrightable subject matter under 17 U.S.C. §1 02(a).
Ibid. Almost all of this passage concerns either the wording of the descriptions, or
the creative thought that went into the underlying taxonomy, such as the decision to
leave gaps in the numbering system. The discussion of the numbers themselves is
limited to two immaterial observations: that numbers in the 4200's rather than the
2500's were assigned to guided tissue regeneration; and that the numbers assigned
to a particular procedure in a catalog will differ depending on the prior allocation of
numbers to other procedures. Neither of these facts evidences any creativity by the
ADA that would render the numbers eligible for copyright protection. The mere
fact that numbers are attached to, or are a by-product of categories and descriptions
that are copyrightable does not render the numbers themselves copyrightable.
Even assuming, arguendo, that some strings of numbers used to designate an
item or procedure could be sufficiently creative to merit copyright protection, the
parts numbers at issue in the case before us do not evidence any such creativity.
ATC's allocation ofnumbers to parts was an essentially random process, serving only
to provide a useful shorthand way of referring to each part. The only reason that a
"sealing ring, pump slide" is allocated number 1 76 is the random ordering of sub
categories ofparts, and the random ordering ofparts within that sub-category. Were
it not for a series of random orderings within each category field, a given part could
be 47165 or 89386. As such, the particular numbers allocated to each part do not
express any of the creative ideas that went into the classification scheme in any way
that could be considered eligible for copyright protection. These numbers are no
more copyrightable than would be the fruit of an author's labors if she wrote a book
and then "translated" it into numbers using a random number generator for each
letter in every word. Even if the text in English was copyrightable, the randomly
generated list of numbers that comprised the "translation" could not be.
Originality aside, there are other sound reasons for denying copyright protec
tion to short "works," such as part numbers. Although the fact that ATC had a
copyright in the number 45607 might not ultimately preclude other people or
entities from using that number in other contexts, given the defenses of fair use
and independent creation available to those accused of copyright infringement,
anyone using that number in a commercial context would face the time-consuming
and expensive prospect of having to defend themselves against such claims. This
would not only be extremely inefficient, but would provide a way for the creators of
otherwise uncopyrightable ideas or works to gain some degree of copyright protec
tion through the back door simply by assigning short numbers or other shorthand
phrases to those ideas or works (or their component parts) . Indeed, the Copyright
Office will not register a short name, phrase, or expression, such as the name of a
product or service, even if it is novel or distinctive. See 37 C.F.R. §202 . 1 While the
use without compensation of one's labors may seem unfair, "this is not 'some
unforeseen byproduct ofa statutory scheme. ' It is, rather, 'the essence of copyright,'
and a constitutional requirement. The primary objective of copyright is not to
reward the labor of authors, but 'to promote the Progress of Science and useful
B. Two Special Cases: Derivative Works and Compilations 109
Arts."' Feist, 499 U.S. at 349 (internal citations omitted) . Permitting uncopyrigh
table materials to receive protection simply by virtue ofadding a number or label would
allow an end run around that constitutional requirement.
As a last resort, ATC suggested during oral argument that even if neither the
ideas that gave rise to the parts numbers, nor the individual part numbers, qua
expressions of those ideas, are copyrightable, the part numbers taken as a whole
were somehow copyrightable as a middle ground between the two, much in the
same way that while neither the basic idea behind a novel nor the individual words
used to write it are protected, the story that those words form when taken together is
copyrightable. The flaw in this argument is that there is no such middle ground in
this case. Unlike the words that comprise a novel, which add up to a story, the
numbers used in ATC's catalog only add up to a long list of numbers. Putting all
the numbers together does not make them expressive in the way that putting words
together makes a narrative . . . .
NOTES AND QUESTIONS
l . Why didn't the merger doctrine dictate the same result in American Dental
that it did in ATC? The American Dental court did not simply address the copy
rightability of the plaintiffs procedure numbers, but also considered the accompa
nying short descriptions and the classification system as a whole. It observed:
"Dental procedures could be classified by complexity, or by the tools necessary
to perform them, or by the parts of the mouth involved, or by the anesthesia
employed, or in any of a dozen different ways. The Code's descriptions don't
'merge with the facts' any more than a scientific description of butterfly attributes
is part of a butterfly. " Am. Dental Ass)n v. Delta Dental Plans Ass)n, 126 F.3d 977,
979 (7th Cir. 1997). Which reasoning-the ATC court's or the American Dental
court's-do you find more persuasive and why?
2. Should a taxonomy be considered a "process" or "method of operation"
and therefore categorically barred from copyrightability under § 1 02(b )? Should this
be the rule even if the taxonomy is highly original-in other words, is there a kind of
originality that is noncopyrightable?
3 . Might the scenes a faire doctrine be relevant in a taxonomy case? If a tax
onomy becomes an industry standard, should that militate against copyright
protection?
B. TWO SPECIAL CASES: DERIVATIVE WORKS

AND COMPILATIONS
In addition to the basic copyrightable subject matter provisions of § 102, the

Copyright Act contains a separate section that accords copyright protection to two
special types of works:
l l0 2. Requirements for Copyright Protection
§103. Subject matter of copyright: Compilations and derivative works

(a) The subject matter of copyright as specified by section I 02 includes com
pilations and derivative works, but protection for a work employing preexisting
material in which copyright subsists does not extend to any part of the work in
which such material has been used unlawfully.
(b) The copyright in a compilation or derivative work extends only to the
material contributed by the author of such work, as distinguished from the pre
existing material employed in the work, and does not imply any exclusive right in
the preexisting material . The copyright in such work is independent of, and does
not affect or enlarge the scope, duration, ownership, or subsistence of, any
copyright protection in the preexisting material.
As you read the following materials, consider whether authors of compilations
and derivative works are or should be held to different standards of originality than
authors of other works.
1 . Derivative Works
U.S. copyright law has long recognized copyrights in works based on other
works. For example, the Copyright Act of I909 extended copyright protection
to "[ r ]eproductions of a work of art" and to "abridgements, adaptations, arrange
ments, dramatizations, translations, or other versions" ofpreexisting works. Pub. L.
No. 60- 349, 60th Cong., 2d Sess. §§5(h), 6, 35 Stat. I 075, I 077 ( I 909) . In the
I 976 Act, Congress adopted the term derivative work and set forth a broad defini
tion that encompasses any work based on or derived from another work:
A "derivative work" is a work based upon one or more preexisting works, such as a
translation, musical arrangement, dramatization, fictionalization, motion picture ver
sion, sound recording, art reproduction, abridgement, condensation, or any other
form in which a work may be recast, transformed, or adapted. A work consisting of
editorial revisions, annotations, elaborations, or other modifications which, as a whole,
represent an original work of authorship, is a "derivative work."
I 7 u.s.c. § 1 0 1 .
International copyright treaties similarly require protection ofworks based on other
works, but the international copyright community has not adopted the "derivative
work" terminology. The Berne Convention mandates protection for "[t]ranslations,
adaptations, arrangements of music and other alterations of a literary or artistic work."
Berne Conv., art . 2( 3 ). The TRIPS Agreement incorporates this provision by reference.
Section I 03(b) of the Act indicates that copyright in a derivative work subsists
only in the new material contributed by the author of the derivative work. Neither
§I 03(b) nor the definition in § I 0 I , however, indicates when the derivative material
is sufficiently distinguishable from the underlying work to constitute a copyrightable
work in its own right. Review the excerpt from Feist, supra page 73, which sets forth
the standard that a work must satisfY to be considered an "original work of author
ship. " Then consider the standards of originality applied in the following cases.
L. Battin & Son, Inc. v. Snyder

536 F.2d 486 (2d Cir.) (en bane), cert. denied, 429 U.S. 857 (1976)
OAKEs, J . : . . . Uncle Sam mechanical banks have been on the American scene at least
since June 8, 1 886, when Design Patent No. 1 6,728, issued on a toy savings bank of
its type. The basic delightful design has long since been in the public domain. The
banks are well documented in collectors' books and known to the average person
interested in Americana . . . . Uncle Sam, dressed in his usual stove pipe hat, blue full
dress coat, starred vest and red and white striped trousers, and leaning on his
umbrella, stands on a four- or five-inch wide base, on which sits his carpetbag.
A coin may be placed in Uncle Sam's extended hand. When a lever is pressed, the
arm lowers, and the coin falls into the bag, while Uncle Sam's whiskers move up and
down . . . .
Appellant Jeffrey Snyder doing business as "J.S.N.Y. " obtained a registration of
copyright on a plastic "Uncle Sam bank" in Class G ( "Works ofArt" ) as "sculpture"
on January 23, 1975 . According to Snyder's affidavit, in January, 1974, he had seen
a cast metal antique Uncle Sam bank with an overall height of the figure and base of
1 1 inches. In April 1 974, he flew to Hong Kong to arrange for the design and
eventual manufacture of replicas of the bank as Bicentennial items . . . . Snyder
wanted his bank to be made of plastic and to be shorter than the cast metal sample
"in order to fit into the required price range and quality and quantity of material to
be used." The figure of Uncle Sam was thus shortened from 1 1 to nine inches, and
the base shortened and narrowed. It was also decided, Snyder averred, to change the
shape ofthe carpetbag and to include the umbrella in a one-piece mold for the Uncle
Sam figure "so as not to have a problem with a loose umbrella or a separate molding
process. " . . .
[Badin, a competing importer ofnovelty Uncle Sam mechanical banks, filed suit
against Snyder after the U.S. Customs Service refused entry to a shipment of banks
ordered by Badin from a Hong Kong trading company. Badin sought a declaration
that Snyder's copyright was invalid. The district court granted Badin a preliminary
injunction under the 1 909 Act.]
This court has examined both the appellants' plastic Uncle Sam bank made
under Snyder's copyright and the uncopyrighted model cast iron mechanical
bank which is itself a reproduction of the original public domain Uncle Sam
bank. Appellant Snyder claims differences not only of size but also in a number
of other very minute details: the carpetbag shape of the plastic bank is smooth,
the iron bank rough; the metal bank bag is fatter at its base; the eagle on the
front of the platform in the metal bank is holding arrows in his talons while in
the plastic bank he clutches leaves, this change concededly having been made,
however, because "the arrows did not reproduce well in plastic on a smaller
size." The shape of Uncle Sam's face is supposedly different, as is the shape and
texture of the hats, according to the Snyder affidavit. In the metal version the
umbrella is hanging loose while in the plastic item it is included in the single
mold. The texture of the clothing, the hairline, shape of the bow ties and of
the shirt collar and left arm as well as the flag carrying the name on the base of
the statue are all claimed to be different, along with the shape and texture of the
eagles on the side. Many of these differences are not perceptible to the casual
observer. Appellants make no claim for any difference based on the plastic mold
lines in the Uncle Sam figure which are perceptible . . . .
The test oforiginality is concededly one with a low threshold in that "[a]ll that is
needed . . . is that the 'author' contributed something more than a 'merely trivial'
variation, something recognizably 'his own.' " Alfred Bell & Co. v. Catalda Fine
Arts, Inc., 1 9 1 F.2d at 1 03 . But as this court said many years ago, "[w]hile a copy of
something in the public domain will not, ifit be merely a copy, support a copyright, a
distinguishable variation will . . . . " Gerlach-Barklow Co. v. Morris & Bendien, Inc.,
23 F.2d 1 59, 1 6 1 (2d Cir. 1927) . . . .
A reproduction of a work of art obviously presupposes an underlying work of
art . . . . The underlying work of art may as here be in the public domain. But even to
claim the more limited protection given to a reproduction of a work of art (that
to the distinctive features contributed by the reproducer), the reproduction
must contain "an original contribution not present in the underlying work of
art" and be "more than a mere copy." 1 M. Nimmer, [The Law of Copyright
( 1975 ) ] , §20 .2, at 93 . . . .
Nor can the requirement of originality be satisfied simply by the demonstration
of"physical skill" or "special training" . . . required for the production of the plastic
molds that furnished the basis for appellants' plastic bank. A considerably higher
degree of skill is required, true artistic skill, to make the reproduction
copyrightable . . . . Here on the basis of appellants' own expert's testimony it took
[Snyder's Hong Kong contractor] "[a]bout a day and a half, two days work" to
produce the plastic mold sculpture from the metal Uncle Sam bank. If there be a
point in the copyright law pertaining to reproductions at which sheer artistic skill
and effort can act as a substitute for the requirement of substantial variation, it was
not reached here.
Appellants rely heavily upon Alva Studios, Inc. v. Winninger, [ 1 77 F. Supp. 265
(S.D.N.Y. 1 959)], the "Hand of God" case, where the court held that "great skill and
originality [were required] to produce a scale reduction of a great work with exacti
tude." 1 77 F. Supp. at 267. There, the original sculpture [Auguste Rodin's Hand of
God-EDs. ] was, "one of the most intricate pieces of sculpture ever created" with
"[i]nnumerable planes, lines and geometric patterns . . . interdependent in [a] multi
dimensional work." Id. Originality was found primarily by the district court to consist
primarily in the fact that "[ i]t takes 'an extremely skilled sculptor' many hours working
directly in front of the original" to effectuate a scale reduction. Id. at 266. The court,
indeed, found the exact replica to be so original, distinct, and creative as to constitute a
work of art in itself The complexity and exactitude there involved distinguishes [sic]
that case amply from the one at bar. As appellants themselves have pointed out, there
are a number of trivial differences or deviations from the original public domain cast
iron bank in their plastic reproduction. Thus concededly the plastic version is not, and
was scarcely meticulously produced to be, an exactly faithful reproduction. Nor is the
creativity in the underlying work ofart ofthe same order ofmagnitude as in the case of
the "Hand of God." Rodin's sculpture is, furthermore, so unique and rare, and
adequate public access to it such a problem that a significant public benefit accrues
from its precise, artistic reproduction. No such benefit can be imagined to accrue here
B. Two Special Cases: Derivative Works and Compilations 1 13
from the "knock -ofP' reproduction ofthe cast iron Uncle Sam bank. Thus appellants'
plastic bank is neither in the category of exactitude required by Alva Studios nor in a
category of substantial originality; it falls within what has been suggested by the
amicus curiae is a copyright no-man's land . . . .
. . . To extend copyrightability to minuscule variations would simply put a
weapon for harassment in the hands of mischievous copiers intent on appropriating
and monopolizing public domain work . . . .
Uncle Sam Bank
MESKILL, J., dissenting: . . . [T]he author's reasons for making changes should be
irrelevant to a determination ofwhether the differences are trivial. As noted in Alfred
Bell, supra, 1 9 1 F.2d at 1 0 5 , even an inadvertent variation can form the basis of a
valid copyright. After the fact speculation as to whether Snyder made changes for
aesthetic or functional reasons should not be the basis of decision .
. . . Granting Snyder a copyright protecting [his] variations would ensure only
that no one could copy his particular version of the bank now in the public domain,
i.e., protection from someone using Snyder's figurine to slavishly copy and make
a mold . . . .
This approach seems quite in accord with the purpose of the copyright statute to
promote progress by encouraging individual effort through copyright protection . . . .
Schrock v. Learning Curve International, Inc.

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

Whether photographs of a copyrighted work are derivative works is the subject
of deep disagreement among courts and commentators alike. See 1 Melville B .
Nimmer & David Nimmer, Nimmer on Copyright §3.03[C] [ l ], at 3-20. 3
(Aug. 2009) . . . .
We need not resolve the issue definitively here. The classification of Schrock's
photos as derivative works does not affect the applicable legal standard for
B. Two Special Cases: Derivative Works and Compilations liS
determining copyrightability, although as we have noted, i t does determine the

scope of copyright protection. Accordingly, we will assume without deciding that
each of Schrock's photos qualifies as a derivative work within the meaning of the
Copyright Act.
B. Originality and Derivative Works . . .

Our review of Schrock's photographs convinces us that they do not fall into the
narrow category ofphotographs that can be classified as "slavish copies," lacking any
independently created expression. To be sure, the photographs are accurate depic
tions of the three-dimensional "Thomas & Friends" toys, but Schrock's artistic and
technical choices combine to create a two-dimensional image that is subtly but
nonetheless sufficiently his own. 3 This is confirmed by Schrock's deposition testi
mony describing his creative process in depicting the toys. Schrock explained how he
used various camera and lighting techniques to make the toys look more "life like,"
"personable," and "friendly." He explained how he tried to give the toys "a little bit
of dimension" and that it was his goal to make the toys "a little bit better than what
they look like when you actually see them on the shelf." The original expression in
the representative sample is not particularly great (it was not meant to be), but it is
enough under the applicable standard to warrant the limited copyright protection
accorded derivative works under § 1 03(b ) .
Aside from arguing that the works fail under the generally accepted test for
originality, Learning Curve and HIT offer two additional reasons why we should
conclude that Schrock's photographs are not original. First, they claim that the
photos are intended to serve the "purely utilitarian function" of identifYing pro
ducts for consumers. The purpose of the photographs, however, is irrelevant.
See Bleistein v. Donaldson Lithographing Co.) 188 U.S. 239, 2 5 1 - 52 ( 1903 ) .
The defendants' second and more substantial argument i s that i t is not enough
that Schrock's photographs might pass the ordinary test for originality; they claim
that as derivative works, the photos are subject to a higher standard of originality.
A leading copyright commentator disagrees. The Nimmer treatise maintains that the
quantum of originality required for copyright in a derivative work is the same as that
required for copyright in any other work. See 1 Nimmer on Copyright §3.01, at 3-2,
§3.03[A], at 3-7. More particularly, Nimmer says the relevant standard is whether a
derivative work contains a "nontrivial" variation from the preexisting work "suffi
cient to render the derivative work distinguishable from [the] prior work in any
meaningful manner. " Id. §3.03[A], at 3 - 1 0 . The caselaw generally follows this
formulation. See) e.g.) Eden Toys) Inc. v. Florelee Undergarment Co.) 697 F.2d 27,
34-35 (2d Cir. l 982) (holding that numerous minor changes in an illustration
of Paddington Bear were sufficiently nontrivial because they combined to give
Paddington a "different, cleaner 'look'" ) ; Millworth Converting Corp. v. Slifka)
3. We note, however, that a mere shift in medium, without more, is generally insufficient to satisfY
the requirement of originality for copyright in a derivative work. Durham Indus., Inc. v. Tomy Corp.,
630 F.2d 905, 9 1 0 (2d Cir. 1 980) (noting that circuit's rejection of"the contention that the originality
requirement of copyrightability can be satisfied by the mere reproduction of a work ofart in a different
medium"); L. Battin & Son, Inc. v. Snyder, 5 36 F.2d 486, 49 1 (2d Cir. 1976 ) (same).
276 F .2d 443, 445 (2d Cir. 1 960) (holding that embroidered reproduction of a
public-domain embroidery of Peter Pan was sufficiently distinguishable because the
latter gave a "three-dimensional look" to the former embroidery).
Learning Curve and HIT argue that our decision in Gracen established a more
demanding standard of originality for derivative works. Gracen involved an artistic
competition in which artists were invited to submit paintings ofthe character Dorothy
from the Metro-Goldwyn-Mayer ("MGM") movie Tbe Wizard of Oz. Participating
artists were given a still photograph of Dorothy from the film as an exemplar, and the
paintings were solicited and submitted with the understanding that the best painting
would be chosen for a series of collector's plates. Gracen) 698 F .2d at 30 l . Plaintiff
Gracen prevailed in the competition, but she refused to sign the contract allowing her
painting to be used in the collector's plates. The competition sponsor commissioned
another artist to create a similar plate, and Gracen sued the sponsor, MGM, and
the artist for copyright infringement. We held that Gracen could not maintain her
infringement suit because her painting, a derivative work, was not "substantially
different from the underlying work to be copyrightable ." Id. at 305 .
Gracen drew this language from an influential Second Circuit decision, L.
Battin & Son) Inc. v. Snyder) 536 F.2d 486 (2d Cir. 1 976) . Read in context,
however, the cited language from L. Batlin did not suggest that a heightened
standard of originality applies to derivative works.4 To the contrary, the Second
Circuit said only that to be copyrightable a work must '"contain some substantial,
not merely trivial originality. "' Id. at 490 (quoting Chamberlin v. Uris Sales Corp.)
1 50 F.2d 5 12, 5 1 3 (2d Cir. 1 945 ) ). The court explained that for derivative works, as
for any other work, "[ t ]he test of originality is concededly one with a low threshold
in that all that is needed is that the author contributed something more than a
merely trivial variation, something recognizably his own . " Id. (internal quotation
marks and ellipsis omitted) .
The concern expressed in Gracen was that a derivative work could be so similar in
appearance to the underlying work that in a subsequent infringement suit brought
by a derivative author, it would be difficult to separate the original elements of
expression in the derivative and underlying works in order to determine whether
one derivative work infringed another. The opinion offered the example of artists
A and B who both painted their versions of the Mona Lisa, a painting in the public
domain. See Gracen) 698 F.2d at 304. "[I]f the difference between the original and
A's reproduction is slight, the difference between A's and B 's reproductions will also
be slight, so that if B had access to A's reproductions the trier of fact will be hard
pressed to decide whether B was copying A or copying the Mona Lisa itself. " Id.
No doubt this concern is valid. But nothing in the Copyright Act suggests that
derivative works are subject to a more exacting originality requirement than other
4. To the extent that Gracen's reading of L. Batlin and its "substantial difference" language can be
understood as establishing a more demanding standard of originality for derivative works, it has
received mixed reviews. Some commentators have suggested that Gracen may have inappropriately
narrowed the copyrightability ofderivative w�rks without a statutory basis. . . . The Third Circuit has
agreed and explicitly rejected Gracen's interpretation of L. Batlin. Dam Thingsfrom Denmark v. Russ
Berrie & Co., 290 F.3d 548, 564 (3d Cir.2002).
works of authorship. Indeed, we have explained since Gracen that "the only 'orig
inality' required for [a] new work to [be] copyrightable . . . is enough expressive
variation from public-domain or other existing works to enable the new work to be
readily distinguished from its predecessors. " Bucklew [ v. Hawkins, Ash, Baptie &
Co., LLP, 329 F.3d 923, 929 (7th Cir. 2003 ) ] . We emphasized in Bucklew that this
standard does not require a "high degree of [incremental] originality. " Id.
We think Gracen must be read in light of L. Batlin, on which it relied, and
Bucklew, which followed it. And doing so reveals the following general principles:
( 1 ) the originality requirement for derivative works is not more demanding than the
originality requirement for other works; and (2) the key inquiry is whether there is
sufficient nontrivial expressive variation in the derivative work to make it distin
guishable from the underlying work in some meaningful way. This focus on the
presence of nontrivial "distinguishable variation" adequately captures the concerns
articulated in Gracen without unduly narrowing the copyrightability of derivative
works. It is worth repeating that the copyright in a derivative work is thin, extending
only to the incremental original expression contributed by the author of the
derivative work. See 1 7 U.S.C. § 1 03(b).
As applied to photographs, we have already explained that the original expres
sion in a photograph generally subsists in its rendition of the subject matter. If the
photographer's rendition of a copyrighted work varies enough from the underlying
work to enable the photograph to be distinguished from the underlying work (aside
from the obvious shift from three dimensions to two, see supra n.3 ), then the
photograph contains sufficient incremental originality to qualifY for copyright.
Schrock's photos of the "Thomas & Friends" toys are highly accurate product
photos but contain minimally sufficient variation in angle, perspective, lighting,
and dimension to be distinguishable from the underlying works; they are not "slav
ish copies. " Accordingly, the photos qualifY for the limited derivative-work
copyright provided by § 1 03(b ) . . . .
C. Authorization and Derivative Works

To be copyrightable, a derivative work must not be infringing. See 1 7 U.S.C.
§ 1 03(a). The owner of the copyright in the underlying work has the exclusive right
to "prepare derivative works based upon the copyrighted work," 1 7 U.S .C.
§ 1 06(2), and "it is a copyright infringement to make or sell a derivative work
without a license from the owner of the copyright on the work from which the
derivative work is derived," Bucklew, 329 F.3d at 930. This means the author of
a derivative work must have permission to make the work from the owner of the
copyright in the underlying work; Gracen suggested, however, that the author of a
derivative work must also have permission to copyright it. 698 F.2d at 303-04
("[T]he question is not whether Miss Gracen was licensed to make a derivative
work but whether she was also licensed to exhibit [her] painting and to copyright
it . . . . Even if [ Gracen] was authorized to exhibit her derivative works, she may not
have been authorized to copyright them . " ) . The district court relied on this lan
guage from Gracen to conclude that Schrock has no copyright in his photos because
he was not authorized by Learning Curve to copyright them. This was error.
. . . Gracen's language presupposing a permission-to-copyright requirement was

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

Ret!Cue H�itel 2002
B. Two Special Cases: Derivative Works and Compilations 1 19
NOTES AND QUESTIONS
l . Do L. Batlin and Schrock employ the same standard of originality?

2. Compare the result in L. Batlin with those in Alva Studios v. Winninger
(discussed in the L. Batlin opinion) and Alfred Bell & Co. v. Catalda Fine Arts, Inc.,
Section A.2 . a supra. Can the three decisions be reconciled? Both of the latter cases
involved fine art reproductions. Was the L. Batlin court discriminating based on a
perceived lack of artistic content? What else might explain the L. Batlin court's
reluctance to find copyrightable originality in the plastic reproductions?
3. Should the standard of originality for derivative works be the same as the
basic standard set forth in Feist, supra? The L. Batlin court and the Gracen court
were both anxious to avoid giving the first creator of a derivative work "a de facto
monopoly" on all subsequent derivative works. Gracen v. Bradford Exch., 698 F.2d
300, 304 (7th Cir. 1983 ) . At the same time, however, the L. Batlin court noted that
allowing a derivative copyright in Alva Studios produced "significant public
benefit." Are these conclusions reconcilable?
According to the Gracen court, the concern about de facto monopolies is based
in part on a desire to protect the rights of the owner of copyright in the underlying
work. Gracen, 698 F.2d at 304. Are there also reasons to be concerned about de
facto monopolies on derivative works based on underlying public domain works?
Should a different originality standard apply depending on whether the underlying
work is copyrighted or in the public domain?
4. Are photographs derivative works of what KEEP IN MIND
. ..·
they depict? Courts have differed on the proper

The right to prepare derivative works is
approach to that question. See Ets-Hokin v. Skyy one ofthe exclusive rights of the copyright
Spirits, Inc. , 225 F.3d 1 068 (9th Cir. 2000) owner, so unauthorized preparation of a
(photograph of vodka bottle was not a derivative derivative work may infringe the
work because bottle was not copyrightable); SHL copyright. The copyrightability and
infringement inquiries differ in focus.
Imaging, Inc. v. Artisan House, Inc., 1 17 F . Supp.
The copyrightability inquiry is concerned
2d 301 (S.D.N.Y. 2000 ) (photographs of With what the second comer has added,
ornamental picture frames were not derivative while the infringement inquiry (which
works because they did not recast, transform, or we consider in Chapter 5) is concerned
adapt those works, but merely depicted them). with what the second comer has taken.
Which approach do you prefer? Should a

photograph be considered a derivative work whenever the subject ofthe photograph
is itself copyrightable? Are there reasons to treat photography differently than other
methods of art reproduction?
5 . Section 1 03(a) of the Act indicates that "protection for a work employing
preexisting material in which copyright subsists does not extend to any part of the
work in which such material has been used unlawfully." Schrock holds that the
requirement of lawful use can be satisfied by a showing that the second comer
had permission to create the derivative work, and does not require an additional
showing ofpermission to assert a derivative copyright. Of course, as the court notes,
asserting copyright protection for the derivative work could be prohibited by con
tract. Do you agree with the court's reasoning? The district court had held that
without express permission from the copyright owner, no copyright could be

asserted in the derivative work. Which is the better default rule?
Under § 1 03(a), can a derivative work prepared without the copyright owner's
permission qualify for copyright protection? Under what circumstances? (Hint: do
"unlawfully" and "without permission" mean the same thing? )
PRACTICE EXERCISE: ADVOCACY

Movie Maven, LLP, buys the master reels of old, public domain films, restores them,
and creates "panned and scanned" versions that adapt the films to a format more
suitable for home viewing. Movie Maven has filed copyright registrations for its ver
sions of the films, identifying them as derivative works.A new competitor, Regis Films,
has begun copying Movie Maven's versions of the films and selling them as its own.
Movie Maven has sued Regis Films for copyright infringement, and Regis Films has
hired your firm to represent it. The supervising partner has asked you to draft a sum
mary judgment motion. Prepare an outline of the main points you will make.
Note on Blocking Patents
The patent system follows a very different set of rules for allocating rights in
initial inventions and subsequent patentable improvements. The second comer who
invents a patentable improvement may apply for and receive a patent regardless of
whether the first inventor authorized the improvement. The first inventor and the
improver are said to hold "blocking patents. " The improver may not practice his
invention without permission from the original inventor, but the first inventor may
not practice the improvement without permission from the improver. Such patents
are frequently the subjects of cross-licensing agreements between the two inventors.
See Standard Oil Co. v. United States, 283 U.S. 1 63, 1 72 n.5 ( 1931 ); Carpet
Seaming Tape Licensing v. Best Seam, Inc., 6 1 6 F .2d 1 1 3 3 , 1 142 (9th Cir.
1980), cert. denied, 464 U.S. 8 1 8 ( 1 983); 5 Donald S . Chisum, Chisum on Patents
§16.02 [ 1 ] [aJ (200 1 ).
The blocking patents rule has been justified in terms of efficiency. According to
Professor Merges, the rule encourages the original patentee to bargain with impro
vers, and therefore avoids potentially significant holdout costs that might impede
valuable innovation. Robert Merges, Intellectual Property Rights and Bargaining
Breakdown: The Case ofBlocking Patents, 62 Tenn. L. Rev. 75 ( 1 994); seegenerally
Ian Ayrt;s & Eric Talley, Solomonic Bar;gaining: Dividing a Legal Entitlement to
Facilitate Coasean Trade, 1 04 Yale L.J. 1 027 ( 1995 ) . More generally, a number of
legal scholars have concluded that society benefits most when would-be improvers
compete with one another and with the original patentee to produce and disclose to
the public valuable inventions, even if this rule results in some duplicative research.
See, e.g., Robert P. Merges & Richard R. Nelson, On the Complex Economics of
Patent Scope, 90 Colum. L. Rev. 8 39, 877-908 ( 1 990); Mark A. Lemley, The Eco
nomics of Improvement in Intellectual Property Law, 75 Tex. L. Rev. 989 ( 1997).
Some commentators, however, have criticized the blocking patents rule. In an
influential article published in 1977, Professor Edmund Kitch argued that giving
patentees broad rights to control subsequent improvements to their inventions
would result in a more efficient allocation of research efforts . Kitch analogized
such rights to nineteenth-century mining claims, which reserved for first comers
the right to explore (or license others to explore) the land described in the claim
deed. He argued that adopting a similar regime for patent law would reduce wasteful
duplication and ensure optimal allocation oflicenses to develop improvements, and
therefore would promote greater overall progress. Edmund W. Kitch, The Nature
and Function of the Patent System, 20 J.L. & Econ. 265, 276-78 ( 1977); see also
Mark F. Grady & Jay I. Alexander, Patent Law and Rent Dissipation, 78 Va. L. Rev.
305 ( 1992 ) . Professor Kitch's "prospect" model actually is quite similar to the
copyright rule granting first comers the right to control the preparation of derivative
works.
If blocking patents promote efficient bargaining between first comers and
improvers, would not a regime of "blocking copyrights" also be efficient? Or is
the "prospect" model more appropriate for copyright law? For an extended discus
sion of this question, see Lemley, supra.
2. Compilations
The Copyright Act of 1 909 recognized copyright in "compilations," but did

not supply a general definition of the term. The 1 9 76 Act remedied that omission.
Section 1 0 1 provides: "A 'compilation' 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. " The TRIPS Agreement similarly mandates copyright protec
tion for " [ c ]ompilations of data or other material . . . which by reason of the selec
tion or arrangement of their contents constitute intellectual creation. " TRIPS
Agreement, art. 10(2).
a. Selection, Arrangement, and Coordination of Data

As you know from reading Feist Publications, Inc. v. Rural Telephone Service Co.,
Section A.2.b supra, the Supreme Court there rejected the "sweat of the brow"
theory as a basis for copyright protection of compilations, and explained that the
Copyright Act's definition of an eligible "compilation" indicates how a compilation
may satisfy the constitutionally mandated originality requirement:
Factual compilations . . . 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
to the former is called a copyright, that given to the latter, letters patent . . . . It is
insisted in argument, that a photograph being a reproduction on paper of the exact
features of some natural object or of some person, is not a writing of which the
producer is the author.
Section 4952 of the Revised Statutes places photographs in the same class as
things which may be copyrighted with "books, maps, charts, dramatic or musical
compositions, engravings, cuts, prints, paintings, drawings, statues, statuary, and
models or designs intended to be perfected as works of the fine arts." "According to
the practice of legislation in England and America," says Judge Bouvier, 2 Law
Dictionary, 363, "the copyright is confined to the exclusive right secured to the
author or proprietor of a writing or drawing which may be multiplied by the arts o:f
printing in any of its branches."
The first Congress of the United States, sitting immediately after the formation
of the Constitution, enacted that the "author or authors of any map, chart, book, or
books, being a citizen or resident of the United States, shall have the sole right and
liberty of printing, reprinting, publishing, and vending the same for the period o:f
fourteen years from the recording of the title thereof in the clerk's office, as after
wards directed. " 1 Stat. 124, 1 . This statute not only makes maps and charts subjects
of copyright, but mentions them before books in the order of designation. The
second section of an act to amend this act, approved April 29, 1 802 , 2 Stat. 171 ,
enacts that from the first day ofJanuary thereafter, he who shall invent and design,
engrave, etch, or work, or from his own works shall cause to be designed and
engraved, etched or worked, any historical or other print or prints shall have the
same exclusive right for the term offourteen years from recording the title thereofas
prescribed by law . . . .
The construction placed upon the Constitution by the first act of 1 790, and the
act of l802, by the men who were contemporary with its formation, many of whom
were members of the convention which framed it, is of itself entitled to very great
weight, and when it is remembered that the rights thus established have not been
disputed during a period of nearly a century, it is almost conclusive.
Unless, therefore, photographs can be distinguished in the classification on this
point from the maps, charts, designs, engravings, etchings, cuts, and other prints, it
is difficult to see why Congress cannot make them the subject of copyright as well as
the others. These statutes certainly answer the objection that books only, or writing
in the limited sense of a book and its author, are within the constitutional provision.
Both these words are susceptible of a more enlarged definition than this. An author
in that sense is "he to whom anything owes its origin; originator; maker; one who
completes a work of science or literature." Worcester. So, also, no one would now
claim that the word writing in this clause of the Constitution, though the only word
used as to subjects in regard to which authors are to be secured, is limited to the
actual script of the author, and excludes books and all other printed matter. By
writings in that clause is meant the literary productions of those authors, and Con
gress very properly has declared these to include all forms of writing, printing,
engraving, etching, &c. , by which the ideas in the mind of the author are given
visible expression. The only reason why photographs were not included in the
extended list in the act of 1 8 02 is probably that they did not exist, as photography

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THE SUBJECT MATTER

A. THE ELEMENTS OF COPYRIGHTABLE

From an economic perspective, the grant of exclusive rights entails a variety of

§102. Subject matter of copyright: In general

(a) Copyright protection subsists, in accordance with this title, in original

2. If the work being performed-e.g., a musical composition or dramatic monologue-were

LOOKING FORWARD ·.·

Williams Electronics, Inc. v. Artie International, Inc.

SLOVITER, J . : . . . Plaintiff-appellee Williams Electronics, Inc. manufactures and sells

NOTES AND QUESTIONS

I. Why require fixation as a condition of copyright protection? Do works that

Cartoon Network LP v. CSC Holdings, Inc.

I. The Buffer Data

Id. at 5 1 8 (quoting 1 7 U. S.C. § 1 0 1 ) .

NOTES AND QUESTIONS

The second requirement for copyrightability is that a work be an "original

Burrow-Giles Lithographic Co. v. Sarony

Oscar Wilde No. 18

We entertain no doubt that the Constitution is broad enough to cover an act

Does the standard of originality identified by the Burrow-Giles Court suggest

Bleistein v. Donaldson Lithographing Co.

Finally, the special adaptation of these pictures to the advertisement of the

NOTES AND QUESTIONS

l . IdentifY and compare the originality standards that Burrow-Giles and

The first time that Congress attempted a comprehensive statement of the

Alfred Bell & Co. v. Catalda Fine Arts, Inc.

[The plaintiff asserted copyrights in eight mezzotint engravings of paintings from

The district court found that

2. Many of them were themselves authors.

8. Burrow-Giles Lithographic Co. v. Sarony, I l l U.S. 53, 57-58.

NOTES AND QUESTIONS

Note on Nonobviousness and Originality

In Burrow-Giles, the Court hinted at some of the differences between copyright

no prior assessment of the work's level of originality is required; instead, copyright

NOTES AND QUESTIONS

b. Establishing the Modern Originality Standard

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

This inevitably means that the copyright in a factual compilation is thin.

. . . In enacting the Copyright Act of 1976, Congress dropped the reference to

or arrangement of those materials; and ( 3) the creation, by virtue of the particular

The copyright in a compilation . . . extends only to the material contributed by the

The selection, coordination, and arrangement of Rural's white pages do not

NOTES AND QUESTIONS

c. Some Contemporary Originality Problems

Mannion v. Coors Brewing Company

Jonathan Mannion is a freelance photographer who specializes in portraits of

Iced Out Como Board Coors Billboard and Billboard Detail

DETERMINING THE PROTECTIBLE ELEMENTS OF THE GARNETT PHOTOGRAPH

1. Protectible Elements of Photographs . . .

. . . A modern work strikingly original in timing might be Catch of the Day, by

To conclude, the nature and extent of protection conferred by the copyright in a

By contrast, to the extent that a photograph is original in the creation of the

2. Originality of the Garnett Photograph

Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc.

6 5 . I recognize that the preceding analysis focuses on a medium-traditional print photography­

year 2004 advertising campaign. ] . . . G&W subcontracted with Meshwerks to

Although we hold that Meshwerks' digital, wire-frame models are insufficiently

NOTES AND QUESTIONS

I. How distinct are the different dimensions of originality described by the

"rendition" or "creation of the subject" violate the Bleistein nondiscrimination

on the New York City subway.

table for sale on craigslist.org.

6 5 . I recognize that the preceding analysis focuses on a medium-traditional print photography