Copyrighted Works Must Be Novel and Nonobvious

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To anyone who knows IP law, the title of this post looks like either ignorance or craziness. I assure you, it’s not ignorance. Everyone knows that one of the distinguishing features between copyrights and patents is that patents require novelty and nonobviousness, and copyrights don’t. All you need to get a copyright is to have an “original” work of authorship — and “originality” is an extremely low threshold. It doesn’t require that the content be new, and it certainly doesn’t require that it be nonobvious; it only requires that it be yours (that is, “original” to you).

That’s the theory, but I don’t think that’s the practice. I was struck by this thought (ow!) over the weekend as I was reading materials on substantial similarity and the idea-expression distinction. (Perhaps this thought occurs to all copyright lawyers at some point; maybe it’s just my week.) There are certain famous passages that get intoned by copyright scholars and practitioners to explain such concepts, a bit like the missal in a Catholic mass. Originality is sometimes explained with this reading from the book of Learned Hand:

We are to remember that it makes no difference how far the play was anticipated by works in the public demesne which the plaintiffs did not use. The defendants appear not to recognize this, for they have filled the record with earlier instances of the same dramatic incidents and devices, as though, like a patent, a copyrighted work must be not only original, but new. That is not however the law as is obvious in the case of maps or compendia, where later works will necessarily be anticipated. At times, in discussing how much of the substance of a play the copyright protects, courts have indeed used language which seems to give countenance to the notion that, if a plot were old, it could not be copyrighted. But we understand by this no more than that in its broader outline a plot is never copyrightable, for it is plain beyond peradventure that anticipation as such cannot invalidate a copyright. Borrowed the work must indeed not be, for a plagiarist is not himself pro tanto an “author”; but if by some magic a man who had never known it were to compose anew Keats’s Ode on a Grecian Urn, he would be an “author”, and, if he copyrighted it, others might not copy that poem, though they might of course copy Keats’s.

Sheldon v. MGM Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936) (citations omitted). The idea here is that independent creation is both sufficient for copyrightability and a sufficient defense to infringement. But there are a couple of problems with the famous Keats hypo. One is that, as many commentators have noted, it is unlikely in the extreme that someone would both get a copyright registration on “Ode on a Grecian Urn,” and be able to enforce it against any copiers. Some amount of novelty would seem to be required as a practical matter. In fact, that’s not much different than patent law. An invention does not have to be completely novel; there are such things as follow-on patents. It’s just that some bit of it has to be something that no one’s ever thought of before. Well, no one’s ever patented, published, or publicly used before.

As long as we are focused on practice, there are still practical differences, of course. A patent goes through an examination process that copyrights do not, where novelty must be proven to the satisfaction of a government employee. I think even the Copyright Office might balk at an attempt to register “Ode on a Grecian Urn,” but it would be pure happenstance if they noticed. Second, when it comes time for an infringement trial, the defendant in a patent case would only have to demonstrate anticipation of the claimed novel element in the prior art. The patent defendant would then get off the hook, regardless of where they got their own invention from — even if it were blatantly copied from the plaintiff’s published patent. (Well, actually, there’s some indication of copying being punished in patent law.) The copyright defendant, on the other hand, must show not only that the alleged infringing elements came from elsewhere, but also that that’s where the defendant actually got them.

Still, I think that a defendant that could show that the plaintiff’s work is almost an exact duplicate of something in the public domain would have a pretty good case, regardless of the doctrinal route to a judgement. But what if the plaintiff’s work was not exactly anticipated by something that came previously? What if the claimed infringement was of material that the plaintiff was the first to come up with, but that seemed, well, rather basic?

The copyright doctrines of merger and scènes à faire might come into play then. The idea behind merger is to enforce the idea-expression distinction; copyright does not protect “ideas,” which might be thought of in this context as very general, high-level descriptions of copyrightable works (12-bar blues; star-crossed lovers). If there is a very limited number of ways of expressing a given idea, that expression cannot receive copyright protection. Think of a film about a sheriff who stands up for law and order in a small western town when some criminals ride in. No matter how you do that, some parallels to “High Noon” are going to be inescapable.

The doctrine of scènes à faire is usually stated as excluding “stock scenes” from copyright protection. “Scènes à faire” means literally “scenes that must be done.”  Scènes à faire is different than merger in that there’s nothing about the idea of the work that requires the stock scene (despite the name); it’s just that it’s very common to have such a scene (or character, or musical element, or what have you). But as Jessica Litman argued in her famous article, The Public Domain, there’s something wrong with this explanation, even though it’s the one that you find in all of the case law and textbooks. Namely, if the scene is truly a stock scene, that’s been used for years or even generations, how in the world is the plaintiff claiming ownership over it as an original work of authorship? Perhaps the doctrine is used in Keats-type situations where a plaintiff has inserted a “stock scene” into a work without even realizing it’s a stock scene. But the Keats hypothetical is a fairly fantastic one, and independent creation (through copying of the public domain material) would be the likely defense. It seems like overkill to have not just one, but two defenses for this extremely unlikely scenario.

Scènes à faire as it’s actually deployed, then, must be most useful for deciding cases where, in fact, the element in question is not a stock scene, riff, or what have you, in the sense of having been used many times before. It may be that the plaintiff was the first to use it. What makes it a “stock scene” unworthy of protection, then? Why was the scene in Hoehling’s book about the Hindenburg set in a German beer hall not infringed by the scene in the Universal Pictures movie about the Hindenburg set in a German beer hall? It seems to me that the reason is because it’s just obvious, whether or not it’s been done before, that if you do a movie about Germans in the 1930s, you’re likely to have a beer-hall scene. A person having ordinary skill in script-writing would immediately perceive the need for such a scene in such a context. Similarly, merger might be thought of as another form of obviousness, the obviousness that results from having too few options to accomplish a given, non-copyrightable goal.

So there you have it. Copyrighted works must be novel and nonobvious. Fortunately, they do not also need to be useful.

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