What do we do with a doctrine like merger? A look at the imminent collision of the DMCA and idea/expression dichotomy.

• Author: Faust, Matthew J.
• Position: Digital Millennium Copyright Act of 1998

INTRODUCTION I. A BRIEF OVERVIEW OF COPYRIGHT FUNDAMENTALS A. The Constitutional and Statutory Requirements of Copyright B. Infringement 1. The Arnstein and Ordinary Observer Tests 2. The Extrinsic/Intrinsic Test 3. Abstraction-Filtration-Comparison C. The Idea/Expression Dichotomy and Related Exclusionary Devices 1. The Merger Doctrine 2. Scenes a Faire D. The DMCA II. WHAT DO WE DO WITH A DOCTRINE LIKE MERGER? A. The DMCA and Its Collision with the Idea/Expression Dichotomy 1. Merger and Scenes a Faire as Affirmative Defenses to Copyright Liability 2. Applying Merger and Scenes a Faire at the Threshold of Copyright B. Lexmark International v. Static Control Components III. HARMONIZING THE INTERACTION CONCLUSION INTRODUCTION

Meet Pete. Pete is an average, nondescript sports fan who works hard during the day and enjoys fantasy football. (1) Pete does not have a law degree, and his only knowledge of the law behind fantasy sports comes from a segment he recently heard on ESPN, about Major League Baseball being sued over the right to use player names and statistics for fantasy baseball purposes. (2) In response to this court decision, which seriously limited the ability of major sports leagues to license the statistics of their athletes, the National Football League (NFL) determined that it could make more money off of fantasy football by offering fantasy football participants an official "NFL Championship Package." (3) Pete learns that this package is available for download or on CD and includes various forms to help participants conduct their fantasy football draft and track their teams throughout the season. Additionally, Pete is interested in the sortable data collection of the athletes' statistics from the last three seasons that is included with the Championship Package. Strangely, the NFL's Championship Package is completely devoid of any software; it consists solely of various files that contain the players' information.

Although Pete wants his fantasy football team to prevail this year, he feels the NFL's price of $59.99 (not including tax or shipping and handling) is too steep. Instead of purchasing the content online, Pete resorts to his favorite file-sharing software to download it. But when Pete learns that he cannot view the content without a password, he downloads a program that will figure out the password and open the files without the NFL's authorization. Shortly after downloading the files, Pete receives a letter from the NFL threatening him with a lawsuit for violating its copyright in the Championship Package. Fearing a protracted legal battle with the NFL, Pete capitulates and pays the NFL the $1000 it demands to avoid the suit.

Unfortunately for Pete, there was no way for him to know whether the NFL would actually bring suit, or even if it would succeed. Of course, if Pete had contacted his attorney, he would have learned that the NFL's claims were not nearly as strong as they stated in their letter. In fact, for reasons explained below, the forms and data collections were probably not copyrightable at all. However, depending on where the NFL brought suit, Pete could be liable for claims under the Digital Millennium Copyright Act (DMCA) even though an infringement claim would likely fail.

The Courts of Appeals are split in how they would handle Pete's case. Some would find liability under the DMCA, even though no infringement actually took place. Others would likely hold that various copyright doctrines, like merger and scenes a faire (which are related to the idea/expression dichotomy), would eviscerate the NFL's infringement claims, and therefore hold that a lack of protectable subject matter would foreclose the NFL's DMCA claim altogether.

Despite the theoretical nature of this scenario, a successful DMCA claim does not need to be supported by a valid infringement suit. (4) To make matters worse, these claims place most of the burden on putative defendants (5) who may have difficulty defending the action or raising a copyright misuse defense. (6)

This Comment will analyze the impending collision between the DMCA and the idea/expression dichotomy. Part I will provide an overview of the relevant copyright fundamentals (including constitutional and statutory requirements, infringement, the idea/expression dichotomy, and relevant portions of the DMCA). After establishing these basic copyright principles, this Comment will analyze the collision between the DMCA and the idea/expression dichotomy in Part II. Finally, in Part III, this Comment will suggest that the tools necessary to resolve the circuit split and provide stability to this emerging aspect of the law already exist and should be widely implemented.

1. A BRIEF OVERVIEW OF COPYRIGHT FUNDAMENTALS

   Although this Comment does not depend upon an intricate knowledge of the history and evolution of copyright law throughout American history, a handy understanding of basic principles will help the reader. Accordingly, before delving into any specific arguments, this Part will discuss constitutional requirements for copyright protection, provide an overview of copyright infringement, and look at the relevant doctrines for excluding copyright protection. Finally, this Part will close with a brief overview of the DMCA.

   1. The Constitutional and Statutory Requirements of Copyright

      The federal government derives its authority to create and regulate copyright from the Constitution. Article I vests Congress with the power "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." (7) From this archaic grant of power, Congress has created the Copyright Act, 17 U.S.C. [section][section] 101-1332. Since the Copyright Act of 1790, copyright jurisprudence has evolved to recognize two fundamental constitutional requirements before copyright protection will attach to a work: originality and fixation. (8)

      The first, and until recently the most controversial, requirement for copyright protection is that of originality. By statute, copyright only protects "original works of authorship." (9) Although this essential underpinning was greatly simplified in Feist Publications v. Rural Telephone Service Co., (10) originality plays an essential role in understanding the idea/expression dichotomy and the doctrines of merger and scenes a faire. Justice O'Connor described originality as the "sine qua non" of copyright (11) and ultimately recognized originality, and thus copyright, as "requir[ing] independent creation plus a modicum of creativity." (12) In doing so, the Court refused to extend copyright protection to a telephone directory and eliminated the popular "sweat of the brow" doctrine (13) in favor of the originality requirement. (14) Not surprisingly, Justice O'Connor's "modicum of creativity" language has become an essential aspect of defining whether a work is "original." In addition to excising the "sweat of the brow" doctrine from American copyright jurisprudence, the Court reaffirmed the longstanding rationale for an originality requirement:

      The mere fact that a work is copyrighted does not mean that every element of the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author. Thus, if the compilation author clothes facts with an original collocation of words, he or she may be able to claim a copyright in this written expression. Others may copy the underlying facts from the publication, but not the precise words used to present them. (15) In this way, originality serves a limited gate keeping function that prevents copyright from granting monopoly protection to authors over facts and ideas that are otherwise necessary to "promote Progress." In the hypothetical described at the beginning of this Comment, the NFL's data collection of player statistics is analogous to the phone book in Feist in that any useful iteration of the data will render the collection non-original, and thus lacking the "creative spark" required for originality.

      In addition to originality, the Court has also established "fixation" as a predicate for copyright protection. (16) Although fixation as a requirement for protection seems rather obvious, (17) its own evolution is as convoluted as that of originality, a fact exacerbated by the lag between technological innovation and legislative adaptation. (18) In creating the Copyright Act of 1976, Congress finally sought to place the law ahead of technology by establishing fixation as "any tangible medium of expression, now known or later developed, ... either directly or with the aid of a machine or device." (19) In this sense, fixation clearly applies to written words, but also applies to recorded sounds and even more transitory alternatives, such as a computer's RAM. (20) Accordingly, there should be no doubt that the NFL's files are sufficiently fixed for the purposes of copyright.

   2. Infringement

      The provisions governing infringement under the Copyright Act are found under Chapter Five, [section][section] 501-512. (21) Infringement occurs when the defendant has "violate[d] any of the exclusive rights of the copyright owner." (22) Generally speaking, these exclusive rights include unauthorized copying of the work, along with unauthorized distribution and performance. (23) Accordingly, the courts have devised a standard format to prove that a defendant did in fact violate one of the plaintiff's exclusive rights.

      Successful copyright infringement actions generally rely only upon the satisfaction of a two-part test created by the Supreme Court. (24) First, the plaintiff must show the ownership of a valid copyright. (25) Next, the aggrieved owner must show that the defendant's work has copied original elements of the infringed work. (26) As copyright plaintiffs know, however, the...