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The Constitution contains some apparent limitations on copyright that would prevent Congress from expanding the law beyond its constitutional limits.[FN330] For example, Congress could not pass a copyright law that granted copyrights in perpetuity (as at common law).[FN331] The reference to authors and their writings has been thought to embody a minimal test of originality, so that Congress could not pass a copyright or related law that protected non-original works.[FN332] The reference to writings could conceivably limit Congress to protecting [p. 396] works that have been fixed in a tangible means of expression,[FN333] but it has not been interpreted to limit Congress to the protection of written or verbal works alone.[FN334] Nothing in the copyright clause, however, necessarily compels the idea-expression dichotomy, and Congress could, consistently with the copyright clause, protect ideas.[FN335]

There is another potential constitutional source for the idea-expression dichotomy that came into vogue during the 1970s—the first amendment to the Constitution.[FN336] Although initially popularized [p. 397] primarily by Professor Nimmer,[FN337] the concept has obtained a certain degree of judicial approval.[FN338] In order to challenge successfully the validity of the idea-expression dichotomy, it has become necessary to deal with the purported first amendment overtones.

Professor Nimmer suggested that advocacy of both a pro-copyright and a freedom of expression bias "may, in fact, be contradictory."[FN339] Although he discussed the possibility that copyright is ipso facto a violation of free speech and therefore unconstitutional, he seemed to concede that the dilemma is inevitable only if one takes an absolutist view of the first amendment.[FN340] Even though "no one really believes that every law which abridges speech falls before the First Amendment,"[FN341] Professor Nimmer nevertheless felt compelled to provide a framework for resolving the presumed constitutional dilemma.[FN342] Rejecting an ad hoc balancing test between speech and non-speech interests,[FN343] Professor Nimmer proceeded to find a "definitional balance" based upon the idea-expression dichotomy.[FN344] It would appear that Professor Nimmer has used the dichotomy to resolve a largely fictitious dilemma.[FN345]

[p. 398] The definitional balance that Professor Nimmer sought is, like the dilemma he perceived, broad and simplistic. The idea-expression dichotomy, he asserted, automatically (and in almost all cases) resolved the copyright-free speech dilemma, because the idea-expression dichotomy accommodates the perceived interests in both the copyright clause and the first amendment.[FN346] To provide a solution that automatically resolves most of the perceived dilemma is neat, but ultimately unconvincing. The idea-expression dichotomy simply does not lend itself to the precise and easy application that Professor Nimmer purported to find. Even in the definition of what is idea and what is expression, the doctrine probably incorporates just as many perplexing issues as does the first amendment itself. In Professor Nimmer's own terms, the idea-expression dichotomy is not compelled by the first amendment; rather, it just happens, by chance, to protect many of the interests represented by the first amendment.[FN347]

Another (and preferable) analysis was proposed by Professor Goldstein.[FN348] Instead of analyzing the possibility of an inherent conflict [p. 399] between copyright and the first amendment, Professor Goldstein analyzed the potential for such conflict, which derives from the two "monopolies" of copyright—statutory and enterprise.[FN349] He concluded, however, that the potential for conflict is largely inhibited by various limitations upon the copyright law other than the idea-expression dichotomy.[FN350] Professor Goldstein then considered the effect of the idea-expression dichotomy; however, rather than viewing the dichotomy in absolute terms, as Professor Nimmer did, he characterized the dichotomy as an "elastic" rule, since the difference between idea and expression is not absolute but a question of degree.[FN351] Apparently, it is only because of this elasticity that Professor Goldstein concluded that the idea-expression dichotomy can accommodate some of the first amendment considerations.[FN352] Indeed, Professor Goldstein generally attacked any "inelastic" rule that forecloses [p. 400] the protectability of works based upon their "status";[FN353] he favored a flexible approach, which broadly recognizes the copyrightability of works and thereby leaves a flexible determination of individual cases based upon other principles (such as substantial similarity).[FN354] In this sense, Professor Goldstein's criticism is similar to my criticism of the idea-expression dichotomy when that doctrine is applied inelastically to foreclose categories of works generally.[FN355]

In Harper & Row, Publishers v. Nation Enterprises,[FN356] the United States Supreme Court considered the claim by The Nation magazine that its unauthorized excerpts from President Ford's memoirs prior to its publication were protected by the first amendment.[FN357] The Court, while overruling the United States Court of Appeals for the Second Circuit, approved of the appellate court's statement that the idea-expression dichotomy accommodates first amendment principles: "The Second Circuit noted, correctly, that copyright's idea/expression dichotomy 'strike[s] a definitional balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author's expression.'"[FN358] The Court [p. 401] then focused not upon the taking of President Ford's ideas, but upon the taking of exact language in several short but significant quotations.[FN359] By thus focusing the issue upon the exact copying, which was admitted by The Nation, the Court effectively avoided having to characterize the extent to which the taking of a mere idea would have been protected by either the idea-expression dichotomy or the first amendment. The Supreme Court's approval of the idea-expression dichotomy as embodying first amendment interests was not for the purpose of finding an idea unprotectable, but for demonstrating the theoretically limited nature of the copyright monopoly. Having demonstrated this, the Court proceeded to a decision that, arguably, illustrates the expansive scope of copyright. An apparently limiting rule was turned around to allow for an expansive reading of copyright interests.[FN360]

Furthermore, the Court recognized that not merely the idea-expression dichotomy, but "copyright itself," might "be the engine of free expression.”[FN361] The Court cited approvingly the suggestion of Chief Judge Fuld of the New York Court of Appeals that "[t]here is necessarily, and within suitably defined areas, a concomitant freedom not to speak publicly, one which serves the same ultimate end as freedom of speech in its affirmative aspect."[FN362] The Court then concluded: "Courts and commentators have recognized that copyright, and the right of first publication in particular, serve this countervailing First Amendment value."[FN363] Thus, far from seeing a [p. 402] conflict between copyright and the first amendment that required accommodation, as suggested by Professor Nimmer,[FN364] the Court viewed a broad consistency in the interests protected by each.

The weakness of the Court's approval of the Nimmer approach to the idea-expression dichotomy is underscored by the Harper & Row dissent. The dissent argued that the majority found "no need to resolve the threshold copyrightability issue," but instead focused upon the impropriety of applying fair use in the particular case.[FN365] The dissent concluded, however, that the majority's "exceedingly narrow approach to fair use permits Harper & Row to monopolize information."[FN366] If the taking of a few hundred words from a book constitutes enough of a taking of expression to pass the idea-expression test, then indeed very little expression need be taken to justify a copyright infringement action, and any first amendment favoritism for the taking of ideas does not tolerate even a slight taking of the expression.[FN367]

Even if the case does tend to endorse Professor Nimmer's approach, it is quite clear—even clearer in the language of the Second Circuit—that the first amendment considerations are based upon the characterization of President Ford's memoirs as "historical" or "factual."[FN368] As such, the first amendment considerations are the strongest. The broader rule about ideas is not compelled, however, even if the nonprotectability of historical facts—especially those of a clearly political nature—is accepted.[FN369]

[p. 403] Another case that appears to have adopted the Nimmer approach is Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corporation.[FN370] In Krofft, the defendant argued that its copying of certain cartoon characters was protected by the first amendment.[FN371] The United States Court of Appeals for the Ninth Circuit stated in response:

[T]he impact, if any, of the first amendment on copyright has not been discussed by the [United States Supreme] Court. We believe this silence stems not from neglect but from the fact that the idea-expression dichotomy already serves to accommodate the competing interests of copyright and the first amendment. The "marketplace of ideas" is not limited by copyright because copyright is limited to protection of expression.[FN372]

Applying the rule to the more abstract and fictional work before it, which was not subject (like news or facts) to strong first amendment overtones,[FN373] the court of appeals seemed to recognize the principle—not in order to deny protection to an idea, but to grant protection to what it found to be expression. The statement was used not to analyze first amendment considerations so much as to excuse them from consideration. While recognizing that there may be rare instances, such as graphic or photographic depictions of newsworthy events, where first amendment concerns may be valid, the court simply concluded that the "[p]laintiffs' work in this case is neither a graphic expression nor concerning newsworthy events. Therefore, no first amendment considerations operate."[FN374]

[p. 404] In final analysis, the first amendment considerations seem not to be as pervasive as Professor Nimmer has proposed. His solution, based upon the idea-expression dichotomy, seems to be primarily an easy option that has been adopted by some courts without much criticism or analysis in order to dispose of fairly frivolous first amendment claims. Some rare cases may indeed raise particularly perplexing first amendment considerations. Professor Nimmer argued that graphic or photographic depictions of newsworthy events, such as the assassination of President Kennedy or the My Lai massacre, require particular attention to the first amendment, and he even proposed an elaborate compulsory licensing scheme to accommodate the freer use of such works.[FN375] An additional problem may exist whenever copyrights are accumulated in order to aggregate a monopoly greater than that contemplated for any one copyrightable work, but such problems probably can best be resolved by reference to the antitrust laws or to regulation of specific industries.[FN376] Another troublesome case might be the use of copyright law not ultimately to disseminate a work, but rather to suppress its dissemination. Arguably, this suppression undermines the policy of the copyright law, which is to promote the advancement of arts and sciences.[FN377] [p. 405] Nevertheless, none of these rare cases seem to depend in their analysis upon the idea-expression dichotomy; instead, they require particular rules to handle particular settings.

As identified by Professor Goldstein, there are numerous other copyright principles that accommodate first amendment principles as easily as, or more easily than, the idea-expression dichotomy. These limitations come from

the constitutional mandate (1) that the period of protection not exceed "limited times" and (2) that protection be accorded only to "writings." Furthermore, though the Constitution's copyright clause authorizes an "exclusive right" in authors, the legislative and judicial method has been to dilute exclusivity by (3) sanctioning many unauthorized uses of copyright subject matter, (4) premising infringement upon actual copying rather than incidental replication, (5) depriving the copyright owner of control over copies of his work once they have entered the market place, and (6) treating the injunction as a discretionary rather than a mandatory remedy.[FN378]

[p. 406] In short, the first amendment hardly depends upon the idea-expression dichotomy for its vitality, since the first amendment either is implicated in numerous other principles of copyright law, or is capable of specific attention on its own terms in those few situations in which first amendment interests are extreme.[FN379]

The various categories of works that involve the idea-expression dichotomy suggest that there may be categories in which copyright is only begrudgingly recognized, or in which the scope of protection may properly be reduced.[FN380] Some of these categories are more likely to raise first amendment problems than others. For example, there is, arguably, a stronger interest in protecting free speech and limiting the scope of copyright in the case of factual, historical, or political works than in the case of fictional or purely artistic works.[FN381] Although [p. 407] the first amendment requires a particularly sensitive analysis of copyright interests in these cases, this does not mean that the same analysis should be extended to all types of "ideas" generally.

In any event, the accommodation of first amendment considerations should never require that a category of works be denied copyrightability in its entirety. Because the first amendment interests seem to be related particularly to the nature of the use of the work (rather than merely to the nature of the copyrighted work), a rule that eliminates whole categories of works from protection seems to be too broad. As Professor Goldstein argued, the "elastic" rule that is to be favored is one that recognizes the copyrightable status of works generally, and places limitations, if at all, on the scope of protection for works.[FN382] The idea-expression dichotomy, if it is to be retained, should be interpreted as a flexible one. But if it is so flexible, it could be subsumed under the tests of substantial similarity or fair use, which traditionally have dealt more clearly with determinations of the scope of protection.

V. Beyond the Idea-Expression Dichotomy

The idea-expression dichotomy rarely arises in a pure form. Instead, the cases usually involve other basic principles of copyright law[FN383] or particular types of copyrighted works that help to explain the outcome of the particular cases, and which could have been used as the primary reason for decision. As a result, other policy considerations [p. 408] have become engrafted upon the idea-expression dichotomy that do not serve to justify the dichotomy. Section (A) reviews several legal principles that have been confused with or implicated in the idea-expression dichotomy, or that might be used in lieu of that dichotomy: the principles of substantial similarity, originality, and fair use. Section (B) reviews special rules that have been developed for handling particular categories of works: works of utility (including systems and procedures, and pictorial, graphic, and sculptural works), factual works, and characters.

A. The Idea-Expression Cases and Other Copyright Principles

Many of the cases discussed in this section purported to apply the idea-expression dichotomy, either in conjunction with one of the other principles or in lieu of such other principles. Even when the cases did not specifically cite the idea-expression dichotomy, it is tempting, in trying to discern an overriding principle that unites these separate doctrines, to hypothesize that they are all specific applications of the idea-expression dichotomy. Such attempts to derive a general unified theory are unnecessary or misleading. The purpose of the idea-expression dichotomy—to protect the marketplace of ideas against undue monopoly—is adequately served by the other basic copyright principles that are more clearly and narrowly delineated.

The idea-expression dichotomy suffers from historical, definitional, and conceptual problems that largely negate its usefulness in deciding particular cases.[FN384] One of the primary features of the idea-expression dichotomy is that it purportedly views a copyrighted work in isolation, applying a threshold test before considering issues of infringement[FN385] On the other hand, some of the doctrines discussed in this section—substantial similarity, fair use, and, to some extent, [p. 409] works of utility—involve the comparison of a copyrighted work with an allegedly infringing work. This comparison inevitably will focus the inquiry, and thus is preferable to rules of categorical exclusion—such as the idea-expression dichotomy. It might be suggested that the idea-expression dichotomy is itself flexible, and therefore can be used as a test for determining the scope of copyright protection, instead of acting as a mere categorical threshold test of copyrightability.[FN386] If so limited, however, the dichotomy becomes indistinguishable from other tests of infringement—particularly, substantial similarity—in which event a requiem for the dichotomy may be more straightforward and honest than an assimilation.

1. Substantial Similarity [FN387]

Probably the greatest number of cases that are improperly or unnecessarily described as idea-expression cases actually deal with, or could have been decided on the basis of, substantial similarity (or lack of substantial similarity) between two works.[FN388] Frequently the doctrines are stated in such a way as to combine them unnecessarily.[FN389] [p. 410] The danger of misdescribing a case as based upon idea-expression, or describing the doctrine in a way that seems to equate the two tests, is that it makes the task of analysis more difficult. In some cases this misdescription leads to the exclusion of works from copyright that are entitled to at least some degree of protection.

a. False Substantial Similarity Cases

There is at least one formulation of the substantial similarity test that incorporates some of the shortcomings of the idea-expression dichotomy, arguably invoking the same outcome in a disguised terminology. These cases may be referred to as "false substantial similarity" cases, because they ultimately turn on a characterization of the copyrighted work as idea or expression. Indeed, the formulation was developed by the same court that first propounded the abstractions test of idea-expression. In the case of Arnstein v. Porter,[FN390] Ira Arnstein, a frequent and unsuccessful plaintiff in copyright suits,[FN391] sued Cole Porter for copyright infringement in several musical works.[FN392] On a summary judgment motion, the district court had dismissed the case.[FN393] On appeal, the United States Court of Appeals for the Second Circuit reversed and remanded with instructions to proceed to trial.[FN394] The case has since been repudiated in part for its holding on the issue of summary judgment,[FN395] and has been severely criticized as well for its test of copyright infringement.[FN396]

[p. 411] The test that the court developed was a two-part test. In weighing the appropriateness of summary judgment, the court stated that "it is important to avoid confusing two separate elements essential to a plaintiff's case in such a suit: (a) that defendant copied from plaintiff's copyrighted work and (b) that the copying (assuming it to be proved) went so far as to constitute improper appropriation."[FN397] The first issue of copying could be evidenced by defendant's admission or by circumstantial evidence of access and copying.[FN398] As a test of infringement that embodies the standard of substantial similarity, the first part of the test is not objectionable. Regarding the second element, however, the court stated that "[i]f copying is established, then only does there arise the second issue, that of illicit copying."[FN399] Although the purpose for making the distinction—to determine the proper delegation of authority between the judge and the jury, and the proper role of expert testimony[FN400]—was perhaps valid, it is not clear what the court meant by "improper appropriation." To put it another way, what appropriation, once proven, would ever be "proper"?

[p. 412] The court of appeals purported to explain its analysis by paraphrasing the question as follows: "The question, therefore, is whether defendant took from plaintiff's works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff."[FN401] Interestingly, the court relied primarily upon Nichols v. Universal Pictures Corporation[FN402] and other cases dealing with the idea-expression dichotomy.[FN403] In other words, once it has been determined that copying has occurred, the next step is to determine whether the copied material is protected by copyright. After comparing the works, the portion actually taken must somehow be characterized in isolation.

The only plausible explanation is that the court was discussing the idea-expression dichotomy, which is the test developed to characterize the portion of a work that is protected and the portion that is not.[FN404] The only difference here is that in the traditional idea-expression case, the work is usually characterized first, and the issue of copying is then raised. Under the two-part test of Arnstein, when the issue is one of summary judgment, the order of inquiry must be reversed, although the most important portion of the test in that case—the portion that was held to be inappropriate for use as a basis for summary judgment[FN405]—was that which characterized whether what was taken was "improper."[FN406]

In addressing the confusion of the Arnstein case, other courts and commentators have explained it as being little more than "an alternative way of formulating the issue of substantial similarity";[FN407] as basically the same thing as the idea-expression dichotomy;[FN408] or as [p. 413] something of a de minimis test.[FN409] It has even been dismissed outright.[FN410]

b. False Idea-Expression Cases

By some formulations, the idea-expression dichotomy is nothing more than a test of substantial similarity. These may be called "false idea-expression" cases, because the formulation of the test actually requires reference to a copying work, and a weighing of the degree of similarity with the copyrighted work.

One example of such a case is Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corporation,[FN411] in which the court [p. 414] held that television commercials produced by McDonald's Corporation infringed the copyright in plaintiff's television series, "H. R. Pufnstuf."[FN412] The United States Court of Appeals for the Ninth Circuit, citing Arnstein v. Porter[FN413] more or less approvingly, set forth a bifurcated test for determining the substantial similarity between two works.[FN414] The first part of the test required a determination whether there was substantial similarity of ideas.[FN415] The court observed that the answer to this question frequently is a simple one: a statue of a horse, for example, is sufficiently different from a statue of a person to constitute substantial dissimilarity even of ideas.[FN416] The court called the test an "extrinsic" one, which could be determined on the basis of analytic dissection.[FN417] Presumably, in a case in which there is not substantial similarity of ideas, the inquiry is ended and the defendant is entitled to win, perhaps even on a summary judgment motion.[FN418]

If there is sufficient similarity in ideas, then the next step is to determine whether there is substantial similarity of expression. According to the Ninth Circuit, this is often more difficult to determine but necessarily involves an "intrinsic" test that is based upon the more subjective response of the factfinder, and not subject, in theory, to analytic dissection or expert testimony.[FN419] In explaining the bifurcated test, the court purported merely to be paraphrasing Arnstein, or applying what it understood Arnstein to have meant.[FN420] But both parts of the bifurcated test required a comparison of the two works before the court. Of course, if two [p. 415] works are significantly dissimilar, they may be said to be different even in their ideas—thus supporting summary treatment by a judge. In Krofft, because the defendants had conceded that the works were similar in idea, the only remaining issue before the court was the degree of similarity of the expression, or precisely what has been thought of as the test of substantial similarity between two works.[FN421] The real lesson of the case is that the defendant, having admitted similarity of idea, could not rely upon analytic dissection of the works as it attempted to do; instead, the defendant had to submit itself to an intrinsic test comparing the more subjective "concept and feel" of the two works.[FN422] On this test, before the trier of fact, it lost.[FN423]

The court in Krofft perceived the need for a test that would avoid overextending copyright law.[FN424] According to the court, the test of substantial similarity was inadequate to provide this protection.[FN425] The proposed cure for the problem was the now-bifurcated idea-expression dichotomy, which alone was supposed to be sufficient to protect against a monopoly of ideas. Yet when, if ever, would there be substantial similarity of expression and not of idea? If two [p. 416] sculptures are of different animals (or of a horse and a human, as illustrated by the court[FN426]), then isn't the substantial dissimilarity of expression sufficient to guarantee dissimilarity of ideas?

The court's distinction between idea and expression may be useful to provide a two-step mechanism for deciding the easy cases, but it simply is not true that the substantial similarity test is inadequate to protect against the cited "untenable results."[FN427] If two works are dissimilar enough to be different ideas, then presumably a court would have little difficulty concluding that they were dissimilar in expression. Thus, the practical fear that plaintiffs would have only a minimal burden of proof in making out a copyright infringement case is not much of a problem. Because Krofft ultimately depended upon a finding of substantial similarity even of the expression of the two works,[FN428] one must wonder what was gained by all the discussion of the potential dissimilarity of ideas. The substantial similarity doctrine was not only adequate to the task, but was the test ultimately used by the court in reaching the conclusion that defendant's work infringed on plaintiff's copyright.[FN429]

Another false idea-expression case is Herbert Rosenthal Jewelry Corporation v. Kalpakian.[FN430] In that case, the United States Court of Appeals for the Ninth Circuit discussed the idea-expression dichotomy at length, and held that the plaintiff's bee pin was not copyrightable because it represented the mere "idea" of a bee, or because the idea and the expression of the bee were inseparable.[FN431] [p. 417] In Herbert Rosenthal Jewelry Corporation v. Grossbardt,[FN432] which involved a similar pin, the United States Court of Appeals for the Second Circuit found that the pin was protected and had been infringed.[FN433]

Although the cases may superficially seem in conflict, an analysis of the facts reveals that they are probably reconcilable, given the nature of the defendants' activities. In Grossbardt, the defendant had "obtained one of Rosenthal's bees, made a rubber mold from it, duplicated the bee, allegedly with inferior gems, and sold it at lower prices."[FN434] Grossbardt's activity thus represented exact copying of the pin. In Kalpakian, the defendant's activity did not represent exact copying, but only the making of a pin that was similar in some respects to plaintiff's. Indeed, the court of appeals admitted that the case "could be disposed of on the district court's finding that defendants did not copy plaintiff's bee pin," but that it "was in fact an independent creation."[FN435] The court concluded that "the production of jeweled bee pins is a larger private preserve than Congress intended to be set aside in the public market without a patent. A jeweled bee pin is therefore an 'idea' that defendants were free to copy."[FN436] The court may have been prompted in its analysis by the plaintiff's claims that

its copyright [was] infringed by defendants' entire line of a score or more jeweled bees in three sizes decorated with from nine to thirty jewels of various sizes, kinds, and colors.

Although plaintiff's counsel asserted that the originality of plaintiff's bee pin lay in a particular arrangement of jewels on the top of the pin, the elements of this arrangement were never identified.[FN437]

[p. 418] Nevertheless, the court deduced a rule of law that would, on its face, foreclose the plaintiff even from protecting against exact copying.[FN438] The better rule, as developed in Grossbardt, would allow federal protection of the bee pins, and determine issues of infringement on a case-by-case basis.[FN439] For exact copies, at least if they are mechanically-produced copies, infringement should be found. For less than exact copies, the test of substantial similarity must be used.

Another line of cases that sometimes invokes the idea-expression dichotomy, but is better understood in terms of substantial similarity, concerns the protection of doll designs. Most of the recent cases, at least as characterized by the courts that decided them, involved defendants who did not copy a doll or character exactly, but who attempted to "cash in" on a generally popular trend.[FN440] In such cases, invoking the test of substantial similarity, the "lay observer" test,[FN441] and sometimes the idea-expression dichotomy, the courts generally have concluded that no infringement has occurred.[FN442] Characterizing [p. 419] aspects of the dolls as idea or expression, however, does not seem nearly as helpful in deciding the cases as comparing the substantial similarity between the particular dolls presented to the courts.

c. The Relationship Between Substantial Similarity

and Idea-Expression

By this point it should be clear that some of the idea-expression cases really do not hinge ultimately upon a characterization of a work in isolation, but instead involve a close comparison of a copyrighted work with an allegedly infringing work. It may be the judge who makes this comparison at a preliminary stage, based upon analytic dissection; it may be the jury, or judge as factfinder, who makes the comparison on the ultimate merits, based upon a more subjective test. Even if the court finds that the two works are similar enough to pass the first hurdle of a summary judgment analysis, the substantial similarity of the two works must be weighed before infringement can be found, so that it is the substantial similarity test that ultimately protects copyright users against the overly broad reach of copyright. To the extent that Krofft enunciates a public policy to protect potential copyright defendants against frivolous claims, it is sufficient that some mechanism exists for allowing summary dismissal of such claims;[FN443] it is not necessary that the mechanism be based upon the idea-expression dichotomy.

There are other substantial similarity cases that purportedly focused upon whether "what was taken" was properly subject to copyright, but for reasons other than the general idea-expression dichotomy.[FN444] For example, in Durham Industries, Inc. v. Tomy [p. 420] Corporation,[FN445] the United States Court of Appeals for the Second Circuit held that copying only the utilitarian aspects of a work, or that part of a work that was itself based upon pre-existing material (and thus was not original), did not constitute a copyright infringement even if there was substantial similarity between the copied and copying works.[FN446] In Hoehling v. Universal City Studios, Inc.,[FN447] the Second Circuit upheld summary dismissal of a suit in which the only similarity between the works was in the recitation of either actual historical events or hypotheses explaining such events.[FN448] There are some cases in which the idea that was taken was never sufficiently defined to qualify for copyright protection because it was too abstract.[FN449] These other bases for excusing the copying of a work in substantially similar form are more compelling than the idea-expression dichotomy generally, and account for a large number of the reported cases.[FN450]

[p. 421] Nevertheless, there are presumably some cases in the interplay between idea-expression and substantial similarity that are not disposed of, or are not capable of being disposed of, on grounds of substantial similarity, lack of originality, works of utility, lack of concreteness, or some other basic copyright principle. There is apparently no definitive case, however, in which none of the other principles is decisive, in which substantial similarity was found, and in which the defendant's copying was nonetheless excused because the substantial similarity was only of idea.[FN451]

The approach is perhaps best suggested in Warner Brothers Inc. v. American Broadcasting Companies,[FN452] in which the United States Court of Appeals for the Second Circuit upheld a summary judgment motion that the television series The Greatest American Hero did not infringe rights in the Superman character.[FN453] The court of appeals concluded that summary judgment in favor of the defendant was appropriate on either of two bases:

[W]e have recognized that a court may determine non-infringement as a matter of law on a motion for summary judgment, either because the similarity between two works concerns only "non-copyrightable elements of the plaintiff's work," . . . or because no reasonable jury, properly instructed, could find that the two works are substantially similar.[FN454]

In the court's subsequent analysis, the second basis—lack of substantial similarity—was the most decisive.[FN455] Under the first basis, which emphasized the idea-expression dichotomy, it would have been possible to itemize the elements of the two characters that were substantially similar—primarily several of the characters' traits—and then dismiss them as merely idea.[FN456] The appellate court rejected that [p. 422] approach, however, emphasizing that it was not the individual traits that were to be characterized as idea or expression, but rather the combination or "overall perception" of all the traits.[FN457] If courts must look to the totality of the characters and not compare individual traits, when will such a totality ever be characterized as idea, not subject to protection? The first basis that the court in Warner Brothers identified as a potential ground for granting summary judgment to defendants is hardly ever an appropriate basis for decision, at least in the case of characters.[FN458]

In Reyher v. Children's Television Workshop,[FN459] the United States Court of Appeals for the Second Circuit held that defendant's television segment and magazine stories entitled The Most Beautiful Woman in the World did not infringe plaintiff's book, My Mother Is the Most Beautiful Woman in the World, "on the ground that any similarities between the two works related only to non-copyrightable matter."[FN460] Because the court recited the substantial similarity doctrine and the idea-expression dichotomy in detail, one might assume that the case involved a potentially substantial taking that was excused by the idea-expression dichotomy.[FN461] Yet, the court of appeals apparently rejected the trial court's finding of substantial similarity.[FN462] After the court of appeals stated that it would affirm [p. 423] the lower court on the ground that the similarities "related only to non-copyrightable matter," the court went on to state that it "must overturn the trial court's factual finding that there were substantial similarities between the two works."[FN463] It is not clear whether the court effectively accepted the finding of substantial similarity and held that the substantial similarity was only of ideas, or whether the court meant to say that there simply was no substantial similarity in the first instance. In any event, the court did give a detailed account of the two stories, and found that the works were different in mood, detail, and characterization, and in their "total feel"[FN464]—a particularly appropriate test inasmuch as the intended audience for both works was children (who would not be expected to be sensitive to nuances). The court also characterized the similarity of events as "scenes a faire, . . . which necessarily result from identical situations."[FN465] In short, although the decision certainly was influenced by the characterization of the similarities as relating mainly to ideas, the court of appeals probably would have reached the same result even if the idea-expression dichotomy had not been available.

What accounts for the tendency of courts to frame these substantial similarity cases in terms of the idea-expression dichotomy? Part of the answer is in the apparent ease with which the doctrine is stated. It is fairly straightforward to say, "Expression is protected, ideas are not." Almost the same thing is achieved by saying, "If you have a copyright, others may paraphrase what you say, so long as they don't copy your words in substantially similar form." Yet, there is still a difference. The latter statement implies that the essence of legitimate copying is the use of different expression, and that any copying that does not express the work differently will infringe. The former statement, in contrast, implies that even some exact copying will be tolerated, so long as the exact copying is only of unprotectable ideas. Yet, the latter statement, together with narrowly confined rules based upon other copyright policies or the particular types of copyrighted works, should be adequate to explain most, if not all, of the existing cases.

[p. 424] d. Other Tests of Infringement

In this Article, the term "substantial similarity" has been used to represent the general approach taken by courts to determine cases at the infringement stage—comparing the degree of similarity between two particular works—rather than at the threshold stage, which is represented theoretically by the idea-expression dichotomy. Yet, substantial similarity is not the only test for determining whether one work infringes the copyright in another. Two alternatives are a "literal similarity" test, which is much stricter against copyright owners; and a "total concept and feel" test, which, arguably, is more lenient in favor of copyright owners.

The idea-expression dichotomy and the substantial similarity test have evolved in preference to literal similarity or verbatim copying as the appropriate test for judging infringement.[FN466] Nevertheless, there are contexts in which literal similarity may be the preferred test. For example, in the case of historical or factual works, some courts have intimated that the test of infringement should be one of literal copying, and not one of substantial similarity.[FN467] In the case of sound recordings, added to the federal copyright statute in 1971,[FN468] the only effective protection is against literal copying.[FN469]

In some recent cases, the emphasis has shifted beyond the test of substantial similarity to the total concept and feel test.[FN470] It is possible that this test is no more than a restatement of the substantial similarity and "lay observer" tests.[FN471] Yet, in its emphasis upon the [p. 425] overall impression of similarity between two works, rather than the need for any specific similarities, the total concept and feel test tends to free the hands of the factfinder to find infringement even though it is hard to articulate the precise similarities between two works.[FN472] This test may therefore represent an extension of the historical trend away from literal copying and towards substantial similarity as the test of infringement, thereby expanding the rights of copyright holders.[FN473]

[p. 426] The existence of different standards for determining infringement is not necessarily a sign of inconsistency. The different standards can be applied to different types of works, or otherwise to balance the competing policy considerations that affect any copyright case. The different standards allow courts a certain degree of flexibility at the infringement stage of a copyright suit. This flexibility is precisely what is lost, however, when the idea-expression dichotomy is invoked as a threshold issue. Some of the recent total concept and feel cases that evidence a flexibility in approach are thus inconsistent in spirit with the idea-expression dichotomy—which is, at best, a throwback to a climate less protective of the interests of copyright owners.

2. Originality

One of the fundamental questions of copyright law concerns the threshold level of authorship required by the federal act or the Constitution [FN474] The courts have consistently insisted that originality is the sine qua non of copyright protection.[FN475] The requirement arises [p. 427] in two contexts. For some types of works, there is a categorical threshold test to determine whether there is any original work that is capable of protection.[FN476] Additionally, for works that pass the threshold categorical test but nonetheless contain unoriginal portions, it is appropriate to say that only the original portions of those works are protected.[FN477]

Some of the originality cases contain language that also refers to the idea-expression dichotomy.[FN478] Other originality cases seem to be [p. 428] based upon a purpose that overlaps with the purpose of the idea-expression dichotomy.[FN479] Yet, as a threshold test, the originality doctrine is preferable to the idea-expression dichotomy. While the determination of whether a work is idea or expression is by its nature almost a metaphysical one, the test for originality—like the test for substantial similarity—will necessarily involve the comparison of two or more works. In the case of substantial similarity, the comparison is between the copyrighted work and the allegedly infringing work; in the case of originality, it is between the copyrighted work and prior works.[FN480] By focusing upon the particular works, the issue is narrowed and analysis is made more concrete.

[p. 429] The interface between idea-expression and originality is best analyzed in several particular settings, which will be discussed in separate subsections. First, the requirement of originality is examined in one of its most troublesome settings—that of derivative works. The significance of the originality test in weighing the "purpose" of copyright law—be it to protect creativity or "mere" industry—is addressed next. Finally, I look at the flip side of originality—de minimus works which show insufficient originality to warrant copyright protection.

a. Derivative Works and "Junk Art"

Within the basic requirement that a work of authorship must be original, and that only the original portions of the work are protected by copyright, there are competing strains of interpretation. On the one hand, the threshold is said to be extremely low, with even the slightest originality sufficient to support the grant of copyright.[FN481] On the other hand, there are recurring cases, frequently involving derivative works or "junk art,"[FN482] in which the courts or commentators have struggled to maintain a minimal test.[FN483] One of the primary battlegrounds for these different approaches is in the case of derivative [p. 430] works, which by definition are at least partially unoriginal and copied.[FN484]

In L. Batlin & Son, Inc. v. Snyder,[FN485] the United States Court of Appeals for the Second Circuit held that the defendant's purported claim to copyright in a plastic replica of an "Uncle Sam" bank was invalid for lack of originality.[FN486] The court found that any variations that might have existed between Snyder's bank and the public domain Uncle Sam bank were trivial, and resulted from the transfer of the work from one medium (metal) to another (plastic).[FN487]

The Batlin case is hard to distinguish from other cases, such as Alva Studios, Inc. v. Winninger[FN488] In the Alva case, the court held that a replica of a public domain work was entitled to copyright protection even if there were no distinguishable variations except for a change in size and medium.[FN489] Indeed, the mere inclusion in the copyright statute of a category such as reproductions of works of art implies that the threshold of originality must be low for such works.[FN490] The court in Batlin purported to distinguish Alva by the degree of skill required to produce the copy, citing Professor Nimmer for the proposition that "the mere reproduction of a work of art in a different medium should not constitute the required originality for the reason that no one can claim to have independently evolved any [p. 431] particular medium."[FN491] The citation to Professor Nimmer was to a criticism of Doran v. Sunset House Distributing Corporation,[FN492] which held that a plastic three-dimensional figure of the public domain character of Santa Claus was original because of "the form—three-dimensional—and the medium—plastic."[FN493] If these were the only elements of originality, then the court's conclusion in Doran might indeed be erroneous, because it implies that the first person to transfer a public domain work into a new medium has a monopoly in that medium.[FN494] One can criticize the holding of the case, however, without having to conclude that any transfer to another medium is per se not eligible for copyright. As evidenced by the Alva or Catalda cases, some reproductions of works of art can require considerable skill in their creation.[FN495] Without the protection of copyright, artists might not be encouraged to invest the time that such copies would require, with a resulting diminution in the numbers of reproductions of works of art—thus presumably undermining the whole purpose behind including reproductions as a category of copyrightable work.[FN496]

There was probably an alternative basis by which the court in Batlin could have found in favor of the plaintiff. The description of the evidence seems to indicate that L. Batlin & Son, when it ordered its plastic banks from its foreign source, had not actually seen the plastic banks made by Snyder.[FN497] Thus, there was no showing that [p. 432] L. Batlin & Son had access to Snyder's bank, or that L. Batlin & Son in fact copied it. A finding of noninfringement would have been justified even without testing for originality. As the court in Batlin applied the law, however, not only was Snyder prevented from protecting his work against imitation; Snyder was also prevented from protecting against exact copying—for example, by making a mold of the Snyder bank, which had admittedly taken at least some effort to produce.[FN498]

The court in Batlin also created an implausible distinction when it stated that "appellants' plastic bank [was] neither in the category of exactitude required by Alva nor in a category of substantial originality; it falls within what has been suggested . . . is a copyright no-man's land."[FN499] It seems illogical to argue that reproductions of works of art are protectable if they are exact copies or if they are distinguishable copies, but not if they fall in between by evidencing some aspects of both originality and skill. The rationale given for the Batlin rule was that

[a]bsent a genuine difference between the underlying work of art and the copy of it for which protection is sought, the public interest in promoting progress in the arts—indeed, the constitutional demand—could hardly be served. 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.[FN500]

The rationale sounds similar to that given for the idea-expression dichotomy.[FN501] Indeed, the court may even have implied a connection between the doctrines.[FN502]

The Batlin case has been cited and followed in more recent cases. For example, in Durham Industries, Inc. v. Tomy Corporation,[FN503] Tomy Corporation claimed that Durham Industries copied its version of Disney character wind-up toys.[FN504] The court found that the level of originality of the wind-up toys, as derivative works based upon [p. 433] the Disney characters, was too low to qualify for separate copyright.[FN505] The court stated that the test of substantial similarity was inadequate to protect against abuse: although other persons licensed by Disney would theoretically be free to develop their own derivative works, the likelihood of access (and at least some similarity) would as a practical matter either subject the second party to harassment or require the second party to avoid even any similarity in the works.[FN506] Thus, while conceding that the test of infringement was theoretically sufficient to prevent overreaching by owners of copyrights in derivative works, the court feared the practical impediment raised by even the possibility of lawsuits.[FN507]

A similar concern was at the heart of Gracen v. The Bradford Exchange.[FN508] Jorie Gracen, as part of a competition, had produced paintings based upon the movie The Wizard of Oz.[FN509] The court held that Ms. Gracen's painting of Dorothy, as a derivative work taken from photographs of the movie, lacked sufficient originality to qualify for protection in its own right as against another artist who was commissioned to prepare similar derivative works.[FN510] The purpose for the rule was "to prevent overlapping claims" in derivative works.[FN511] The court was clear to limit its analysis to derivative works, however, so as not to represent too significant a departure from the general rule of Bleistein.[FN512]

[p. 434] It is much easier to apply the originality test in this context than to characterize the cases in idea-expression terms. One could argue, after all, that the derivative works captured only the idea of the original works and not their expression; or that the idea and expression of the works had merged, thus importing idea-expression language into the test for originality. It is much easier to see the issue in terms of originality: focusing upon the lack of original elements in the plaintiffs' works, based upon a comparison of the derivative work with the work from which it was taken.[FN513]

Nevertheless, it might have been better in each of the three cases—Batlin, Durham Industries, and Gracen—to base the analysis upon the plaintiff's failure to prove that the defendant had actually copied the plaintiff's works instead of the originals. As in the idea-expression context, the creator of a derivative work should be afforded some protection, even if only against mechanical reproduction of plaintiffs' works. For example, in Durham Industries, there were at least some elements of choice in determining how to expand the two-dimensional cartoons to three-dimensional form, despite the fact that Disney owned all rights in the underlying characters.[FN514] Yet, if a court finds the additions and variations obvious, the outcome is less objectionable in the context of originality, where at least there are two or three works to serve as a basis for comparison. If the purpose common to the two principles—that is, to protect against overexpansion of copyright claims—is better served by the test of originality, then there is one less reason to invoke idea-expression analysis when the more precise test is available.

b. The "Purpose of Copyright Law": Creativity versus Industry

Some of the cases involving originality reflect an arguably separate policy that might be cited to justify a narrow view of originality or [p. 435] the idea-expression dichotomy. The purported policy is that copyright should protect a certain degree of creativity, or "fancifulness," but not mere "industry" or the expense, time, and effort that falls short of a certain creative level of authorship.[FN515] It might also be argued that while copyright protects both types of effort, copyright law is not as adept as, say, state laws that regulate unfair competition in promoting the proper constitutional role of copyright[FN516]—an observation that is bound to lead to a begrudging approach toward granting federal copyright protection.

Such a purported policy, however, does not reflect the historical role played by copyright law.[FN517] That federal copyright does indeed protect industry as well as creativity is evidenced by the protection of maps, directories, and fact works, as well as photographs and other subject matter for which it has been held that the threshold level of originality or creativity is quite low.[FN518] Additionally, the fact [p. 436] that federal copyright law now protects sound recordings, regardless of the level of creativity of the musical or other works embodied in them,[FN519] indicates that industry as well as creativity can serve as an adequate basis for granting federal protection. As proposed by Professor Gorman and others, the work that reflects industry instead of fancifulness should not be foreclosed from copyright, although it may be appropriate (for some categories of works) to view the protection as "thin," and therefore scrutinize closely the work at the infringement stage.[FN520]

c. De Minimis Works

Many of the originality cases may be viewed as imposing the following rule: For a work to be copyrightable, something more than a minimal effort is required. The copyrighted work need not be new or novel, but it must be something that the author has created—that is, something that would not exist but for the efforts of the author.[FN521] Whereas the originality standard seems to work well when applied to individual works, there have also been efforts to set forth categorical rules to shield the copyright system from frivolous claims. Some of these rules may be based upon an originality requirement; others may be viewed as ad hoc rules—founded in principle upon the originality requirement, but not necessarily limited in individual cases to that doctrine.[FN522]

Many of the rules for handling de minimis works have been addressed by the Copyright Office. This is not surprising; although a copyrighted work need not be registered with the Copyright Office, as a practical matter threshold issues will be first raised when a [p. 437] copyright owner attempts to register such a work. The Copyright Office has stated that it will not register certain works primarily because of their de minimis nature.[FN523] These works include the following:

(a) Words and short phrases such as names, titles, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; mere listing of ingredients or contents;

(b) Ideas, plans, methods, systems, or devices, as distinguished from the particular manner in which they are expressed or described in a writing;

(c)Blank forms, such as time cards, graph paper, account books, diaries, bank checks, scorecards, address books, report forms, order forms and the like, which are designed for recording information and do not in themselves convey information;

(d) Works consisting entirely of information that is common property containing no original authorship, such as, for example: Standard calendars, height and weight charts, tape measures and rulers, schedules of sporting events, and lists or tables taken from public documents or other common sources.[FN524]

This apparently simple listing incorporates items which must be viewed as excluded for different reasons. Some of the categories might be excluded because they represent works of utility,[FN525] or because they lack the requisite level of originality.[FN526] With other [p. 438] works, exclusion seems to be based upon the idea-expression dichotomy directly.[FN527] Finally, some works can only be explained by imposing a de minimis rule: that works of insufficient quantity or length will not be protected even if they are original, presumably because copyright is not to be used to create a monopoly in "trite" (albeit original) works of authorship.[FN528] These de minimis works include several of those listed in subsection (a)—words and short phrases, names, titles, slogans, or typography.[FN529] If these regulations are a correct interpretation of copyright law, at least some of the categories reveal a de minimis test that is related to, but not entirely co-extensive with, the originality doctrine and the idea-expression dichotomy.

3. Fair Use

The fair use doctrine, though of common-law origin,[FN530] has now been ratified in the copyright law itself.[FN531] It certainly has its critics, [p. 439] and has been even at its best an elusive or confusing doctrine. In some ways, fair use reflects some of the same purposes and considerations that are generally attributed to the idea-expression dichotomy.[FN532] Indeed, one commentator who has advocated abolition of the idea-expression "fallacy" argued that the fair use doctrine is well suited to filling any gap which might otherwise be created in the copyright law.[FN533] Such an approach would have the positive effect of shifting the inquiry away from the plaintiff's work in isolation, and [p. 440] toward a comparison of two works—thereby incorporating the nature of the copyrighted work as only one factor among several. The fair use doctrine is so flexible, however, that it runs the risk of incorporating all of the shortcomings of the idea-expression dichotomy as well. Other theories, primarily that of substantial similarity, can substitute for most of the idea-expression analysis; however, fair use could serve the function of a safety valve to protect against overextension in particular cases aside from the idea-expression dichotomy itself.

B. Categories of Works and the Idea-Expression Dichotomy

In Part V(A) the idea-expression dichotomy was discussed as it related to certain other basic principles of copyright law—the doctrines of substantial similarity, originality, and fair use. The present section considers the special principles that have been developed for particular categories of copyrighted works—works of utility, factual works, and characters. Although each of these special principles bears some relationship to the idea-expression dichotomy, they are preferable to the idea-expression dichotomy precisely because they are focused upon particular types of works that maintain more compelling public policy justifications for close scrutiny than exist for the idea-expression dichotomy generally.

1. Works of Utility

Works of utility might be viewed as a subset of a more generalized idea-expression dichotomy: in works of utility, the idea involves something that has utility in the "real world."[FN534] The next subsection addresses those situations in which the idea is the implementation of [p. 441] a system or procedure. The subsection following treats the more traditional types of works of utility: pictorial, graphic, or sculptural works, including items of manufacture and mechanical works as well as works depicting such useful articles.

a. Systems and Procedures

A copyrighted work may have utility as a system or procedure for organizing or doing things in the real world, and it is in this context that the works of utility doctrine comes closest to the idea-expression dichotomy. For example, Baker v. Selden[FN535] may be viewed as a work of utility case because it involved the use of a system of bookkeeping as well as the potential copying of the particular forms used to implement the system.[FN536] Most of the other types of statutorily uncopyrightable subject matter under section 102(a) would come under this heading: "procedure, process, system, method of operation, concept, principle, or discovery."[FN537]

Many cases claiming copyright in systems or procedures could also have been decided on principles that do not require a general works of utility doctrine. For example, many such claims to copyright protection can be dismissed because the systems are simply too abstract or insufficiently delineated to provide a meaningful basis for protection.[FN538] At the very least, the system would have to be fixed [p. 442] in a tangible medium of expression to qualify for protection under section 102(a).[FN539] Other claims of copyright in systems or procedures can be dismissed on the ground that the two works in issue are simply not substantially similar so that there is insufficient proof of copying.[FN540] If the concept passes these hurdles, it may also be attacked as a work lacking sufficient originality to qualify for copyright protection.[FN541]

[p. 443] Because these other doctrines could apply to many of the cases involving systems and procedures, the primary domain of the works of utility doctrine will be original systems and procedures that are sufficiently delineated and are copied in substantially similar form. Perhaps such delineated concepts should be protected by copyright: a sufficiently delineated idea (to use idea-expression language) is more like expression than idea. Yet, unless the work meets the higher patentability standards, protection of such systems is eschewed for fear that grant of a monopoly in the expression of such works of utility might somehow inhibit users from putting the described systems into operation.[FN542]

One possible interpretation of the works of utility doctrine, as applied to systems and procedures, is that it is more or less subsumed under section 106 of the 1976 Copyright Act, which defines the exclusive rights of copyright and does not include the exclusive right to use a copyrighted work.[FN543] Yet, the works of utility doctrine might [p. 444] be given a wider role.[FN544] The right of a user to use a copyrighted work might be so powerful a policy that this right should override the competing rights of a copyright owner whenever the exclusive rights of copyright conflict with the rights of the user. This analysis is similar to the merger argument which presumes that otherwise infringing activity should be allowed in order to protect the presumed right of another person to make use of the copyrighted work.[FN545]

The works of utility doctrine, however, should not be construed to foreclose copyright protection if such protection merely affects incidentally the rights of users to make effective use of the systems disclosed.[FN546] An illustrative case is Cash Dividend Check Corporation v. Davis,[FN547] in which a check was used as part of a stamp redemption plan.[FN548] Although checks generally were uncopyrightable, the court held that the particular check in that case (which had language that was not contained on most checks) was eligible for copyright.[FN549] The check did have original elements, and it did not "hamper the business world in its use of bank checks or other instruments of commercial activity."[FN550] Thus, an idea or scheme was not ineligible for protection in all cases—it simply had to have separately copyrightable elements.[FN551] The otherwise copyrightable elements were not lost simply because the scheme had a utilitarian application, so long as others were free to devise their own schemes or to use the basic commercial components in which a copyright was not claimed.

Systems and procedures need a rule similar to that developed for pictorial, graphic, and sculptural works of utility: namely, such works [p. 445] should not be foreclosed from protection, but protection should extend only to the aesthetic or expressive features of the work that are severable from the utilitarian aspect of the work.[FN552] The other copyright principles previously discussed—the requirement of concreteness, the test of substantial similarity, and the test of originality—together with the rule that copyright does not generally extend to use,[FN553] are sufficient to protect the rights of users in most cases. If, in a particular case, use of a system or procedure really requires the violation of an exclusive right of a copyright owner, it is the fair use test that should be applied, taking into account not only the nature of the use but all of the other factors embodied in section 107 of the 1976 Copyright Act.[FN554]

b. Pictorial, Graphic, and Sculptural Works

The copyright law has been consistently interpreted to cover visual works, despite the potential argument that Congress's power to protect the writings of an author covers only verbal or literary works.[FN555] Although earlier copyright law made a distinction between works of "fine" art,[FN556] which were protected, and works of applied art, which were not, amendments to the copyright act over the years have clearly extended protection to cover works of craftsmanship or applied art.[FN557] Pictorial, graphic, and sculptural works that are works [p. 446] of utility or "useful" articles, however, are subject to special limitations under the 1976 Copyright Act.[FN558] Presumably these limitations are based upon the assumption that allowing a monopoly in a utilitarian work may lead to an improper monopoly in the use of the work. Such fears are largely misplaced. The copyright law defines the exclusive rights that it grants, and such rights do not include the exclusive right to use the copyrighted work.[FN559]

[p. 447] The works of utility doctrine might be viewed as a subset of the idea-expression dichotomy.[FN560] Applying idea-expression language to pictorial, graphic and sculptural works might lead to the conclusion that a copyright owner is entitled to a monopoly only in the expressive or aesthetic portions of the copyrighted work (the form), not in the idea (which represents, in this context, the functional aspects of the copyrighted work).[FN561] If there is an area of overlap between the idea-expression dichotomy and the works of utility doctrine, the doctrine that directly addresses works of utility is probably better designed to handle the perceived problems in this area than is a generalized idea-expression dichotomy.[FN562]

To some extent, the special rules for pictorial, graphic, and sculptural works share some of the same shortcomings as the idea-expression dichotomy: they require a characterization of a work itself (or its form), as opposed to the function of the work, without reference to either the infringing work, or the extent to which the original work's function could be or is utilized by using a different form.[FN563] Although the definition of a pictorial, graphic, or sculptural work would seem to be a threshold determination, the definition in [p. 448] section 101 of the 1976 Copyright Act allows protection of a work of utility "to the extent that" it can be identified separately, so that partial inclusion within the sphere of protection is possible.[FN564] Thus, courts may in fact peek at the allegedly infringing work when making the threshold determination.

i. Items of Manufacture and Mechanical Works

Some of the judicial reluctance to allow broad copyright protection for works of utility can be traced to an earlier doctrine that denied copyrightability of "commercial" works and "mere" advertisements.[FN565] This narrow doctrine was abandoned, however, by such cases as Bleistein v. Donaldson Lithographing Company,[FN566] which allowed copyright protection for a circus poster used as an advertisement.[FN567] In the 1954 case of Mazer v. Stein,[FN568] the United States Supreme Court held that a copyrightable work did not lose its protection simply because it was ultimately destined to be included in a "useful" article.[FN569] The 1976 Copyright Act continues to allow the protection of works of craftsmanship within the terms of sections 101 and 113.[FN570]

[p. 449] Although copyright has been extended to cover three-dimensional works that represent works of craftsmanship,[FN571] a more difficult issue is raised if the three-dimensional work has a mechanical as well as an aesthetic function. The most graphic example might be the mechanical games and wind-up toys that were the subject of Durham Industries, Inc. v. Tomy Corporation.[FN572] The policy is quite strong that a copyright in the sculptural aspects of actively mechanical toys and games should not prevent others from making toys and games that incorporate the function, but not the form, of the copyrighted work.[FN573] It might be argued that Mazer was decided in favor of the copyright owner because the statuette at issue, although ultimately incorporated into a lamp, didn't do anything; rather, it was a stationary object having nothing to do with the lighting function of the lamp.[FN574] There are, of course, bound to be difficult cases that are midway along the continuum between "active" and "passive" utilitarian works. For example, the light fixture at issue in Esquire, Inc. v. Ringer[FN575] was relatively passive, and yet it was difficult for the United States Court of Appeals for the D.C. Circuit to identify any aesthetic aspect of the lamp that was not totally subsumed in its aspect as a lighting fixture.[FN576]

[p. 450] In any event, to the extent that cases such as Durham Industries seem to raise compelling arguments in support of the idea-expression dichotomy, they are more properly decided on the narrower works of utility doctrine, and are on the strongest theoretical foundation when used to foreclose works that actively perform a mechanical function.

ii. Works Depicting Useful Articles

According to the classic interpretation of Baker v. Selden,[FN577] even drawings or plans that are protectable under the 1976 Copyright Act as pictorial works[FN578] do not include any rights to build or make the article depicted in the drawing. For example, an architect may have a copyright in the plans of a building, but the plans do not necessarily give any exclusive rights to build the building that is depicted in them;[FN579] a fashion designer may have a copyright in a pictorial [p. 451] portrayal of dress designs, but the drawing does not necessarily extend any rights in making the actual dress;[FN580] or a car designer may have a copyright in the drawing or model of a car, but obtains no rights to make the automobile of the same design.[FN581]

This doctrine may be seen as related to the idea-expression dichotomy. For example, the leading cases of Scholz Homes, Inc. v