A reaffirmation of the law regarding originality for copyright protection under US law

Jade McKellar

For a work to be protected by copyright, a modicum of originality is required. But would a blank form with some text be sufficiently original?

1709 Blog friend Jade McKellar (University of Southampton) discusses a recent decision of the Review Board of the US Copyright Office which confirmed that the answer is ... no.

Over to Jade:

"The United States Copyright Office Review Board affirmed the refusal the register to register a copyright claim to text in the work “Online California DMV Vehicle Registration” on the basis of insufficient creativity.

Some key principles considered by the Review Board relate to:

• Distinction between ideas and expression: Section 102(b) Copyright Act 1976 excludes protection for “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” and thus codifies the distinction originated in Baker v Selden, 101 U.S. 99 (1879) between ideas and expression in respect of copyright protection. Copyright protection is available for the expression of ideas, not for the underlying ideas themselves. 
• Merger doctrine (Baker v Selden): where there is one way, or a limited number of ways for an author to convey an idea, the author’s expression cannot be protected under copyright as it would prevent others from using that idea in other works. 

On the basis of these principles the United States Copyright Office has a presumption against the registration of blank forms. The Office’s Regulations preclude registration of “blank forms […] which are designed for recording information and do not in themselves convey information”.

The Copyright Office will examine a work of this type to determine if it contains “an appreciable amount of written or artistic expression” that can be separated from the work’s method of capturing information.

• Originality: A work is registrable it is an “original work of authorship fixed in any tangible medium of expression” 17 USC 102(a). For a work to be “original” it must be an independent creation of the author and contain sufficient creativity (Feist Publications Inc v Rural Tel. Serv. Co, 499 U.S. 340 (1991)). Only a modicum, or more than de minimis, quantum of creativity is necessary. There can be no copyright in a work where “the creative speak is utterly lacking or so trivial as to be virtually non-existent”. A mere simplistic arrangement of non-protectable elements does not demonstrate a sufficient level of creativity for protection (Coach Inc. v Peters, 386 F. Supp. 2d 495 (S.D.N.Y. 2005); Satava v Lowry, 323 F. 3d 805 (9th Cir. 2003)). A combination of non-protectable elements will only be eligible for copyright protection in instances where those elements are numerous enough and their selection and arrangement is original enough to constitute an original work of authorship. 

Background

Cartagz filed an application to register a copyright claim in ‘text, arrangement and layout of text’. This claim was later limited to ‘text’. The work for which registration was sought is represented below:

The United States Copyright Office refused to register the claim on the basis that blank forms and similar works are not protected by copyright. Cartagz requested that the office reconsider its refusal to register. The Office re-evaluated the claims in the First Request and reaffirmed its decision not to register the claim on the basis that the work did not contain sufficient originality or creative authorship. 

Cartagz requested pursuant to 37 CFR 202.5(c) that the Office reconsider its refusal a second time, on the basis that the Office had applied a higher creativity standard than warranted by copyright law, that following Harcourt, Brace & World Inc. v Graphic Controls Corp 329 F. Supp. 517 (S.D.N.Y. 1971). Blank forms have been registrable where they exhibit more than a de minimis amount of creativity, and that the work contains sufficient creativity to obtain copyright protection.

Analysis

The Review Board examined the work in light of the legal standards discussed. The work is a blank form designed to allow the user to record information. Under section 102(b) of the Copyright Act and the merger doctrine, blank forms are not typically subject to copyright protection unless they are shown to contain an appreciable amount of written or artistic expression distinct from the underlying method for recording information.

The Board considered whether the work contains such distinct written or artistic expression to warrant registration: 

• The work’s constituent elements were merely ‘words and shorts phrases, and, as such, are not copyrightable’ (37 CFR 202.1(a)).
• The work as a whole is not sufficiently creative to support registration. Works made by public domain elements may be copyrightable if the selection, arrangement and modification of the elements reflects choice and authorial discretion that is not so minor that “the creative spark is utterly lacking or so trivial as to be non-existent”. Cartagz’s work consists of very few elements, most of which are necessary incidents to allow users to record information, and thus the aggregation of words and phrases in the work lacks sufficient creativity to warrant registration. 

Cartagz’s claim was limited to “text”. However, Cartagz additionally asserted that it intended to maintain a claim in “the selection, coordination, and arrangement of the specific textual and graphical content of the Advertisement as a compilation, which it believed would still be covered by its claim in ‘text.’”.

The Board noted that Cartagz did not register a claim in compilation in the initial application. However, the Board found that even if the compilation rubric were applied in examination of the work, sufficient creative compilation authorship to support registration could not be found. The work does not contain a sufficient amount of creative authorship in respect of the selection, coordination, and arrangements of the work’s constituent elements to warrant copyright protection.

The United States Copyright Office Review Board found that the work, comprising a minimal combination of words and short phrases, lacked the ‘modicum of creativity’ requirement expounded in Feist.

Significance

This decision has reaffirmed the distinction between protectable original expression of ideas and unprotectable underlying ideas in respect of copyright protection, and the criteria for original authorship and creativity. The Copyright Office followed its longstanding presumption against the registration of blank forms on the basis of these principles, and also confirmed the requirement for an above de minimis quantum of creativity in the assessment of the originality of a work.

Court of Appeal upholds High Court decision in SAS v WPL

SAS v WPL is an on-going saga which has been to the High Court, the CJEU, back to the High Court and now to the Court of Appeal. The facts of the case are not simple. They are set out in detail in Arnold J's first High Court decision, but by way of reminder:

Add caption

SAS Institute Inc. (SAS) developed the SAS system, which enables data processing and analysis tasks. A key aspect of the SAS system is that users can write and run their own applications to use the system to manipulate data. These programs had to be written in the SAS language, a programming language developed by SAS meaning that users were then tied to the SAS system to run their own applications.

The defendants are World Programing Limited (WPL), creators of World Programming System, a system which replicated the functions of the SAS components. Crucially, World Programming System was compatible with the SAS language meaning that users were no longer tied to SAS and could use their own applications with World Programming System instead of the SAS system.

 WPL created World Programming System by studying a Learning Edition of the SAS system (supplied under licence) and by consulting SAS's manual. There was no allegation that WPL had access to, or copied, SAS's source code.

A summary of the CJEU's answers and the High Court's subsequent decision can be found here.

Court of Appeal - appeal dismissed

Last week the Court of Appeal dismissed SAS's appeal. Lord Justice Lewison said:

"Although I disagree with some of the judge's reasoning, those disagreements do not affect the ultimate result. Since the appeal is an appeal against the judge's order rather than against his reasons, I would dismiss the appeal."

Without going through each point in the Court of Appeal's decision as to why they agreed with the outcome if not the reasoning of the High Court, it is interesting to consider Lord Justice Lewison's observations on the intellectual creation test.

The intellectual creation test

Readers may recall that one of the more interesting aspects of Arnold J's decision was his use of the "intellectual creation" test rather than the "skill, labour and judgment" test when considering the originality of a programming language. Assuming a computer language is not a computer program, this implied that the test for originality is harmonised for all works rather than just for computer programs, databases and photographs.

More interesting still, Arnold J said that even if he had found that a programming language could be an intellectual creation, it did not follow that it had to be a work, clarifying that the 8 categories of protected works set out at s.1(1) CDPA were still relevant: the CJEU's broader definition of a copyright protected work still did not apply in the UK.

The concept of an intellectual creation was discussed in the Court of Appeal's decision at great length. At paragraph 30 Lord Justice Lewison confirms that the CJEU has taken an expression used in one directive ("intellectual creation" which is used in the Software Directive) and applying it to another (the Information Society Directive). It does so, he says, in order to establish "a harmonised legal framework for copyright".

He then goes on to consider what constitutes an intellectual creation. The essence of the term, he says, is that "the person in question has exercised expressive and creative choices in producing the work. The more restricted the choices the less likely it is that the product will be the intellectual creation (or the expression of the intellectual creation) of the person who produced it."

Lord Justice Lewison then says that the test, "intellectual creation" may not be quite the same as the traditional test under English law. He compares the fact that in the UK databases were by copyright as they contain "labour, skills or effort" before the Database Directive harmonised protection. In most European countries databases were not intellectual creations therefore were not protected. Therefore, he says:

"If the Information Society Directive has changed the traditional domestic test, it seems to me that it has raised rather than lowered the hurdle to obtaining copyright protection."

This is an interesting conclusion as many see the "intellectual creation" test generally being broader than the "labour, skill and judgment" test. I would be interested to know which test readers think is broader?

We then go on to application of this test, and to this blogger this is where the judgment has missed a step: we are never told whether the "intellectual creation" test, as it is to be applied in the UK, is the test for originality or the test for a protected work.

By comparing "intellectual creation" with "skill, labour and judgment" it seems that Lord Justice Lewison was referring to the test for originality. This is confirmed by his view that "intellectual creation" is now the test for determining whether a restricted act has been done in relation to a substantial part of a work (i.e. does the part which has been copied contain the author's own intellectual creation?)

Arnold J said at para 34 of his judgment:

"Counsel for SAS Institute argued that the SAS Language was an intellectual creation, and therefore it was a work. In my view that is a non sequitur.  As counsel for WPL pointed out, there are many intellectual creations which are not works…"

The Court of Appeal does not address this point therefore the question of whether in the UK all intellectual creations constitute works protected by copyright remains unanswered.

Idea v expression

A short post-script on another copyright dilemma which is considered in the Court of Appeal's judgment: where is the line between an idea and the expression of an idea? Lord Justice Lewison says at para 60 of his decision that "what is critical is not the intellectual creation but the expression of the intellectual creation". He clarifies later that the functionality of a computer program (in the sense of what it does and how it responds to particular inputs) falls on the ideas side of the line.

He also reiterates the lovely reasoning of Pumfrey J in Navitaire Inc v easyJet Airline Co Ltd:

"Take the example of a chef who invents a new pudding. After a lot of work he gets a satisfactory result, and thereafter his puddings are always made using his written recipe, undoubtedly a literary work. Along comes a competitor who likes the pudding and resolves to make it himself. Ultimately, after much culinary labour, he succeeds in emulating the earlier result, and he records his recipe. Is the later recipe an infringement of the earlier, as the end result, the plot and purpose of both (the pudding) is the same? I believe the answer is no."

 

Conclusion

All that to say that the Court of Appeal agreed with the High Court, and dismissed the appeal, confirming that copyright cannot protect the look and feel of computer programs.

Originality in photographs: follow-up to Harney v Sony decision

Harney v Sony: non-infringing

A few days ago The 1709 Blog posted its analysis of a very recent US decision, in which the US Court of Appeals for the First Circuit attempted to apply basic [this does not mean uncontroversial] principles such as the idea/expression dichotomy and originality to photographs. 

Photography has been highly a controversial copyright subject-matter since its early days. Although the US Supreme Court acknowledged as early as 1884 that photographs could be regarded as protectable subject-matter, application of copyright principles to this form of art has proved inconsistent. 

The case decided on 7 January last is Donald A Harney v Sony Pictures Television, Inc, and A&E Television Networks, LLC. On Palm Day 2007 freelance photographer Don Harney took a photograph of a little girl riding piggyback on her father's shoulders, as they left a church in Boston. Harney's picture became extremely well-known, especially after it was revealed that the man portrayed in the picture was "professional" imposter Christian Gerhartsreiter/Clark Rockfeller, who abducted his daughter Reigh during a parental visit. The FBI used Harney's picture in a "Wanted" poster, and also various media widely disseminated it. In 2010, Sony made a film entitled Who is Clark Rockfeller?, based on this case. The film included an image that resembled, especially in relation to the pose and composition, Harney's photograph.

Harney initiated copyright infringement proceedings against Sony, but both the District Court for the District of Massachusetts and the Court of Appeals ruled in favour of Sony. Although it was undisputed that Harney owned a valid copyright in his photograph and Sony had copied it, both courts held that almost none of the protectable aspects of the plaintiff's photo had been reproduced by the defendant. In particular, as Sony had included neither the Palm Sunday symbols, nor the church in the background or any identifiable location, no copyright infringement was found to subsist.

Friedman v Guetta: infringing

The 1709 Blog post has attracted a series of comments thus far, including those of plaintiff Don Harney, who said:

"It is still my opinion that the court's decision was wrong. Just last year, photographer Glen E. Friedman won a case against artist Thierry Guetta, who illustrated Friedman's portrait of Run DMC. He had altered the background, just as Sony did with the image that I made. Sony had reproduced the heart of my copyrighted image, Rockfeller and his daughter, just as Guetta did with Friedman's image. The heart of an image is what copyright law has traditionally protected. There are quite a few cases which illustrate that precedent. This ruling is a real blow to professional photographers that make a living selling their images and protecting the copyrights of those images. Perhaps if I could have spent as much money as Sony on legal fees, there would have been a different ruling in this case."

To the objection raised by 1709 Blog reader David that no copyright could possibly subsist in the idea of portraying a little girl sitting on her father's shoulders Don, while adding interesting details as to the background to his case, responded as follows:

"When I first made the picture of Clark Rockfeller with his daughter on his shoulders, I had an agreement with the newspaper I was freelance shooting for, that they had a one time usage and that I owned all rights to the images that I provided to them beyond that. A year later, when Rockfeller kidnapped his daughter, the newspaper distributed the picture to news outlets and law enforcement officials without contacting me. I lost all control over distribution of my own copyrighted work. It was published all over the civilized world without my permission. After the amber alert was lifted I tried regaining control over this valuable image, and sought payment from publications that were publishing the image outside the limits of fair use ... In the case of Sony and their Lifetime dramatization 'Who is Clark Rockfeller', they admitted to copying the image I made and used it in the context of entertainment, and they profited off of that docudrama. The actors portrayed the individuals that I photographed that day. I'm sure Sony paid the photographer they hired to recreate the image and the prop people that came up with similar clothing to match my original image. Like I said before, the heart of the image was Rockfeller and his daughter Reigh on his shoulders. The background and the Palm Sunday aspect was irrelevant to me. I found him to be a strange man when I met him so the 'Diane Arbus' in me compelled me to make this picture. He did not want me to photograph him at first (for now obvious reasons), but I really worked hard to finesse him. I succeeded in taking the only picture that exists of these two individuals together that I am aware of ..." 

David remained unpersuaded and 1709 Blog reader John Walker commented that the originality of Harney's photo descends from the fact that it is an image of a man who is himself a 'fake' - if anybody has a unique right, it is surely him.

As far as I am concerned, I am inclined to be on Don's side, as it seems to me that what Sony reproduced was not just a series of unprotectable elements in his photograph.

Portrait of Natascha Kampusch
by Eva-Marie Painer

In addition, I would like to draw a parallel with EU law, as Harney's case is similar, to some extent, to Case C-145-10 Painer (here and here).

As 1709 Blog readers will remember, Austrian freelancer Eva-Marie Painer had taken several portrait photographs of Natascha Kampusch before she was abducted in 1998. After the girl managed to escape, but prior to her first public appearance, several German and Austrian publications published, among other things, Painer's shots of Natascha without asking for the photographer's permission. The Court of Justice of the European Union (CJEU) ruled that:

·         A portrait photograph can be protected by copyright if it is an intellectual creation of the author reflecting his personality and expressing his free and creative choices in the production of that photograph. 

·         The media, such as newspaper publishers, may not use, of their own volition, a work protected by copyright by invoking an objective of public security. However, it is conceivable that a newspaper publisher might, in specific cases, contribute to the fulfilment of such an objective by publishing a photograph of a person for whom a search has been launched. It should be required that such initiative is taken, first, within the framework of a decision or action taken by the competent national authorities to ensure public security and, second, by agreement and in coordination with those authorities, in order to avoid the risk of interfering with the measures taken by them, without, however, a specific, current and express appeal, on the part of the security authorities, for publication of a photograph for the purposes of an investigation being necessary.

What do other readers think of this case or, more generally, of copyright issues surrounding photographs?

Fashion and copyright

Unable to attend (meaning not invited to) Milan Fashion Week, this blogger spoke yesterday at the legal equivalent: the Intellectual Property in the Fashion Industry conference. 

The IP Kat was speed blogging at a rate of knots, so you may already have read his summary of the conference, however below is some more detail on the copyright issues that were discussed.

Copyright doesn't protect fashion

"Copyright doesn't protect fashion" is a statement frequently bandied around, however what is meant is that in the UK at least it is difficult to protect a garment using fashion. Our closed list common law system means that unless a garment can be said to fall into one of the eight protected categories, it cannot be protected. A garment could be said to be an original artistic work: a work of artistic craftsmanship. Case law is not in favour of this argument as a string of cases demonstrate how difficult it is to show that a garment is artistic (see for instance the baby's cape in Merlet v Mothercare, or the sweaters displayed in the V&A in Guild v Eskandar.) The requirement that a work be "artistic" is unusual in the copyright world as it requires a judge to consider the esthetic merit of the work. As Lord Reid said in Hensher v Restawhile, "it depends on whether a substantial section of the public admire the thing for its appearance". The result of this is that it is difficult to show that a garment is a work of artistic craftsmanship, and indeed no-one at the conference could remember a case where any work had been considered to be a work of artistic craftsmanship.

That said, it is possible to protect other works relevant to the fashion industry using copyright. There is far less controversy surroundin the protection of photographs, films, collages, sculptures etc.

The Red Bus Case

Temple Island v New English Teas (the red bus case) was discussed in relation to Kate Spade's alleged copying of Vera Neumann's poppy design. The case demonstrates how difficult it is to draw a line between copying an idea or concept such as a poppy, and copying the expression of that idea, i.e. Vera Neumann's design. Further, the PCC's finding that a person who recreates the subject matter of another person's photograph can infringe copyright in that photo is relevant to the fashion industry as magazines and catalogues often recreate runway or haute couture photographs to showcase high street clothes.

Harmonisation of protected subject matter

A string of recent cases from the CJEU indicate that in the EU a work is protected if it is its "author's own intellectual creation" (see Infopaq, Bezpečnostní softwarová asociace, FAPL and SAS v World Programming Ltd). This does not sit comfortably with the English law notion that a work is only protected if it falls within one of the eight categories set out at s.1 CDPA and it is not clear whether English courts will follow the CJEU's approach in protecting works in which the author's own intellectual creation vests. The notion of what is a protected work is not generally controversial however the EU test could enable protection of items currently not protected under English law, such as garments or perfume.

An allied concept is that of originality, for which the EU test has been applied in the UK by the High Court in NLA v Meltwater. Mrs Justice Proudman found that, when considering originality in relation to whether a substantial part of a work was taken, it was necessary to take European law into account. Answering her own question as to whether the test of originality had been changed by Infopaq she considered that the test had been 'restated but for present purposes not significantly altered by Infopaq'.

All this is indicative that fundamental copyright principles are changing and that we could see a shift towards increased protection for the fashion industry.

 Whether the fashion industry needs or wants increased protection is another question entirely. See here for an analysis of "why knock-offs are good for the fashion industry" and contrast with the fact that the US "Fashion Copyright Bill" has made it throught he Senate Judiciary Committee and is headed for the full Senate.

Cameron wins Avatar copyright case

Following on for my post on The Godfather, and whether it is possible to protect a film character by copyright, this week a federal judge in the US has thrown out a claim against James Cameron and 20th Century Fox. The  claim alleged that in making the film Avatar, Cameron and 20th Century Fox had copied the screenplay for the unmade film Bats and Butterflies by Elijah Schkeiban. This is one of many claims that Avatar infringes copyright in an existing work (no doubt inspired by Avatar's $2.7bn (£1.7bn) box-office gross) all of which have failed.

In this instance, Mr Schkeiban alleged that Avatar was substantially similar to his screenplay for Bats and Butterflies, an unmade film which was based on a series of books written by him. In particular he claimed that Jake Sully, the wheelchair-bound hero in Avatar, was based on the lead character in Bats and Butterflies because both are physically "weak". He also said that he multi-levelled homes which the Na'vi tribe live in on Avatar's moon, Pandora, are comparable to the plants and trees in Bats and Butterflies. Finally Mr Schkeiban argued that that the "twist" in Bats and Butterflies, whereby the baddies turn on the goodies, should be protected by copyright.

Common sense dictates that Mr Schkeiban's claim should fail. It is always difficult to protect a plot by copyright, and it is even more difficult to protect distinct elements of a story such as the protagonist's physically weak demeanour. In the UK, the Patent County Court found last year in Hodgson v Isaac that the entire plot of a book can be protected, however Mr Schkeiban's claim fell far short of alleging copying of the whole plot.

Manuel Real, sitting in the US district court of California held that Mr Schkeiban's screenplay was "not substantially similar" to Avatar and that Bats and Butterflies was "a straightforward children's story that lacks the depth and complexity of the moods expressed in Avatar". Whilst the decision is undeniably less interesting than the question of who should play Christian Grey in Fifty Shades of Grey, it is reassuring to see a straightforward copyright case now and again.

The Godfather: Can you copyright a film character?

The Godfather was initially written as a novel by Mario Puzo, before Paramount Pictures produced the film in 1972. Before he died in 1999 ,Mario Puzo wrote the screenplay for The Family Corleone, the prequel The Godfather, however the screenplay was never produced. Subsequently Ed Falco wrote a novel, The Family Corleone, based on Mario Puzo's screenplay. His novel was published by Grand Central Publishing, and was released on 8 May 2012. 

© Jim Unterschultz

Prior to publication, Paramount Pictures stepped in to try to prevent the new novel being published. Paramount sued Mario Puzo's estate in March of this year, seeking a declaration that it owned the publishing rights to any book that was a prequel or a sequel to The Godfather. Paramount claims that it bought copyright in The Godfather from Mario Puzo in 1969. Paramount says that this included all literary rights and the rights to use any characters "created for the story in other works."

Unsurprisingly, Mario Puzo's estate has now requested confirmation from the courts that Paramount does not have any rights over future films in the The Godfather franchise. The estate says that the original agreement between Paramount and Mario Puzo did not include book publication rights therefore the estate owns the publishing rights as well as  the film rights to all new books.

The idea/expression dichotomy springs to mind here: copyright cannot protect an idea and it can sometimes be difficult to protect characters. In the UK we know from Hodgson v Isaac that the entire plot of a book cannot be copied, and it is therefore arguable that if a character is described in a sufficiently detailed and original way that it too could be protected by copyright. The fact pattern in this case is relatively complicated, and the case may turn on what the contract said rather than on copyright law, but either way this will be an interesting one to watch.

 

The idea/expression dichotomy in the virtual world

Last Friday, Electronic Arts (EA) sued Zynga in the US District Court for the Northern District of California, alleging that Zynga's new game, The Ville infringes copyright in EA's The Sims Social. The online games, which are both played on Facebook, involve players creating characters who live, work and interact with each other in the virtual world.
EA has said that The Ville is "unmistakably" similar to The Sims Social and that the games are "largely indistinguishable" to the casual observer, but that the similarities go beyond the superficial. EA have said that Zynga's "design choices, animations, visual arrangements and character motions and actions have been directly lifted from The Sims Social".

Zynga was quick to respond, saying that EA doesn't understand copyright and that it plans to defend its rights. Further, Zynga points out that EA's recently launched SimCity Social is very similar to Zynga's CityVille game.

The question of how much can be copied turns on the idea/expression dichotomy, which says that ideas are not protected by copyright, only expressions of ideas are protected. This is a concept that has been analysed in the world of literature, film and photographs however there is little case law in relation to video games, where the complexity of the games combined with the fact that players have direct input on what the game looks like and how it plays out make the analysis more difficult.

An early case in this area was Atari v Phillips. Atari made Pac-Man, a game that many readers will surely remember. Phillips released a similar game called Munchkin, and were subsequently sued by Atari. In 1982, the court held that Phillips had copied Pac-Man and that it had made alterations that "only tend to emphasize the extent to which it deliberately copied the Plaintiff's work."

The ruling was one of the first to establish how copyright law should apply to video games.

In 1994, the courts found in favour of the copier when Capcom sued Data East alleging its game Fighter's History infringed copyright in Capcom's Street Fighter II. In this case the court held that since Capcom’s characters were themselves based on previously existing stereotypes and martial arts disciplines there was no infringement.

Most recently in Tetris v Xio Interactive (which Eleonora reported on here) the district court of New Jersey said that: "The doctrine is simple to state - copyright will not protect an idea, only its expression - but difficult to apply, especially in the context of computer programs."

The court went on to say that "The style, design, shape, and movement of the pieces are expression; they are not part of the ideas, rules, or functions of the game".

EA has made a very detailed claim, which specifies for instance that The Ville uses the same skin tone colours as Sims Social and that the refrigerators in the virtual houses are so similarly drawn that they overlap nearly perfectly. On that basis it seems likely that Zynga is infringing the expression of EA's game as well as the idea. If the case does make it to court without settling the judgment will offer much needed clarity in this area of the law, and could have a huge impact on the masses of lookalike games on the market.

People who live in glass houses shouldn't throw stones

A recent judge's opinion in the acrimonious dispute between US television broadcasters CBS and ABC indicates that CBS is unlikely to be able to prevent ABC from continuing to air its new reality TV show The Glass House. This raises the question of how television show formats are protected, and whether similar litigation in the UK would have the same outcome.

CBS, which has been broadcasting reality TV show Big Brother in the United States since 2000, recently found out that ABC was developing a very similar show called The Glass House, due to be launched on 18 June. The similarities between the shows are obvious: both involve a group of people living together, under the scrutiny of television cameras (and therefore the public), with no outside contact. In both the contestants are voted off the show over time, with the last person left in the house being the "winner".

CBS warned ABC not to proceed with The Glass House. It received no response so in May CBS issued a federal court claim against ABC for, amongst other things, copyright infringement, trade secret misappropriation and unfair competition.

On 15 June the court denied CBS a temporary restraining order over ABC to prevent The Glass House from being broadcast.  

 (c) Nuno Cardoso

CBS then issued a tongue-in-cheek press release, which you are encouraged to read at your leisure, in which it referred to two imaginary shows, "Dancing On the Stars" and "Postmodern Family", poking fun at ABC's other well-known TV shows.

On 21 June the judge handed down a detailed civil minute opinion, in which he found that CBS was unlikely to prevail on the merits, that it had failed to demonstrate entitlement to the relief it sought, and denying an order to show cause for a preliminary injunction.


David Ginsburg, Executive Director of UCLA School of Law’s Entertainment, Media, and Intellectual Property Law department said in the Huffington Post that:

"CBS is too astute and is too well-represented not to have expected the court's reasoning and these results. If so, what motivates the relentless attempts by reality TV plaintiffs to seek injunctive and damage relief that courts are simply not granting?"

It is this blogger's guess that publicity may have motivated this particular attempt, or a desire to prevent a third party from benefiting from a revived version of slightly tired TV format. Whatever the motivation, CBS has failed to prevent ABC from launching The Glass House, and is unlikely to get any damages or other remedy in court.

The question arises therefore: what can be protected? The plethora of talent contest shows (X Factor, The Voice, American Idol, America's/Britain's Got Talent) which have nearly identical formats indicates that not much can be protected. Consider however game shows such as Who Wants To Be A Millionaire? The format is no more complex than can be found in other shows, however the franchise is the most internationally popular TV franchise of all time, having aired in more than 100 countries worldwide. Broadcasters must be paying for something more than trade marks, they must be buying the right to use the format, implying that it is in some way protected.

What is protected boils down to the idea/expression dichotomy. Article 2 of the WIPO Copyright Treaty and Article 9(2) of the TRIPS Agreement both provide that copyright protection extends to expressions of ideas but not to ideas themselves. This means that the concept of a reality TV show where contestants live in a house being filmed 24 hours a day cannot be protected by copyright, whereas the film made of them by the production team can. 

Under US law CBS would have to show that The Glass House is substantially similar to Big Brother, a standard which requires a high coincidence of shared expressive content. Had the case been brought in the UK CBS would have to show that a substantial part of Big Brother had been taken and reproduced in The Glass House. The courts would have considered whether The Glass House was original in its own right. Case law indicates that English law is line with the US (for example Meakin v BBC& Others [2010] EWHC 2065 (Ch)), i.e. that TV formats are not protected.

However one should consider the implications of the recent "red bus case" in which the Patents County Court held that a recreation of a photograph of a red bus, going over Westminster Bridge, against a monochrome background, infringed copyright in a similar earlier photo. Based on that logic it is very possible that, if the shows were sufficiently similar, CBS's claim might have succeeded in the UK.

Format rights are big business in all countries, so it seems logical that they should be protected. Perhaps the red bus case might give Channel 5 a leg to stand on should The Glass House come to the UK.

On the idea/expression dichotomy and puzzle videogames

Tetris

An interesting case touching upon the fascinating topic of the idea/expression dichotomy has been decided recently by the US District Court for the District of New Jersey. This is Tetris Holding, LLC and Tetris Company, LLC v Xio Interactive, Inc (on which see Wired report here.)

Plaintiffs Tetris Holdings and Tetris Company (respectively, the owner and licensor of copyright and trade dress in well-known 1980s videogame Tetris) brought a lawsuit against defendant Xio Interactive, creator of Mino, a 2009 multiplayer puzzle videogame for iPhone. They claimed, among the other things, federal copyright and trade dress infringements. 

Tetris is a facially simple puzzle game in which the player is tasked with creating complete horizontal lines along the bottom of the playing field by fitting several types of geometric block pieces (called Tetrimino pieces) together. The game becomes more complex and more difficult as one progresses and is left with fewer options to arrange the pieces and less area of the playing field is available. 

Since its first appearance, Tetris Holding has developed numerous versions of Tetris for modern platforms, including iPhone.

According to District Judge Freda Wolfson, the facts of the case were undisputed. 

Background

Mino was created by recent college graduate Desiree Golden, who admittedly used Tetris 
as an inspiration. Actually, Mino was intended to be Golden's version of Tetris and Golden had donwloaded Tetris's iPhone app for the purpose of developing Mino.

Yet defendant Xio, a company formed by Golden, claimed that it had taken inspiration 
from Tetris after diligently researching intellectual property law and in such a way so as not to 
copy any copyright-protected materials. Indeed, the elements copied were said to be 

Mino

non-original expression of Tetris, because they were part of the game itself—the rules, function, and expression essential to the game play—which is not protected. In any case, Xio had also tried to obtain a licence from Tetris Holding, but this was refused.

Shortly after Mino was released, Tetris sent DMCA takedown notices to Apple, which removed Mino from its apps marketplace. However, Xio sent two counter-notifications and Apple informed Tetris Holding that Mino would be reinstated unless Tetris filed a lawsuit. This is what eventually happened.

Tetris Holding claimed that Mino infringed the following original elements of Tetris:

1. Seven Tetrimino playing pieces made up of four equally-sized square joined at their sides;

2. The visual delineation of individual blocks that comprise each Tetrimino piece and the display of their borders;

3. The bright, distinct colors used for each of the Tetrimino pieces;

4. A tall, rectangular playfield (or matrix), 10 blocks wide and 20 blocks tall;

5. The appearance of Tetriminos moving from the top of the playfield to its bottom;

6. The way the Tetrimino pieces appear to move and rotate in the playfield;

7. The small display near the playfield that shows the next playing piece to appear in the playfield;

8. The particular starting orientation of the Tetriminos, both at the top of the screen and as shown in the "next piece" display;

9. The display of a "shadow" piece beneath the Tetriminos as they fall;

10. The color change when the Tetriminos enter lock-down mode;

11. When a horizontal line fills across the playfield with blocks, the line disappears, and the remaining pieces appear to consolidate downward;

12. The appearance of individual blocks automatically filling in the playfield from the bottom to the top when the game is over;

Both Tetris and Mino were iPhone apps

13. The display of "garbage lines" with at least one missing block in random order; and

14. The screen layout in multiplayer versions with the player's matrix appearing most prominently on the screen and the opponents' matrixes appearing smaller than the player's matrix and to the side of the player's matrix.

The judgment

The judge held that it was unquestionable that Mino and Tetris looked alike. However, to resolve the claim of copyright infringement, it was necessary to first determine which elements of Tetris are protected and which are not.

Pursuant to 17 USC §102 and relevant case law, elements of computer programs which may 
be protected by copyright include both the code of the program and its graphical elements. In no case, however, does copyright protection 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 a work.

The judge acknowledged that the idea/expression dichotomy is simple to state but "difficult to apply, especially in the context of computer programs." [this also because US courts have elaborated many tests to determine what is protectable and what is not]. However, said the judge,

At the end of the day, no matter how one expresses the test, the task is clear: because copyright only protects original expression, I must delineate between the copyrightable expression in Tetris and the unprotected elements of the program, then evaluate whether there is substantial similarity between such expression and Defendant's Mino game. The starting point in this analysis must be to understand the ideas and concepts of Tetris itself.

To this end, two related doctrines must be considered: merger and scènes à faire. Merger exists when an idea and its particular expression become inseparable. The doctrine of scènes à faire applies to expression that is so associated with a particular genre, motif, or idea that one is compelled to use such expression. 

Where expert evidence is gathered
in videogame cases

With these principles in mind, the judge held that:

Xio is correct that one cannot protect some functional aspect of a work by copyright as one would with a patent. But this principle does not mean, and  cannot mean, that any and all expression related to a game rule or game function is unprotectible. Such an exception to copyright would likely swallow any protection one could possibly have; almost all expressive elements of a game are related in some way to the rules and functions of game play. Tetris Holding is as entitled to copyright protection for the way in which it chooses to express game rules or game play as one would be to the way in which one chooses to express an idea ... Xio conflates the doctrines of merger and scènes à faire to say that Tetris Holding cannot protect expression inseparable from either game rules or game function ... Xio also relies on a number of opinions discussing video games. In no case, however, did a court find that expression was unprotectible merely because it was related to a game rule or game function. 

Within this framework, the judge then compared the audiovisual aspects of the two games: 

Tetris is a puzzle game where a user manipulates pieces composed of square blocks, each made into a different geometric shape, that fall from the top of the game board to the bottom where the pieces accumulate. The user is given a new piece after the current one reaches the bottom of the available game space. While a piece is falling, the user rotates it in order to fit it in with the accumulated pieces. The object of the puzzle is to fill all spaces along a horizontal line. If that is accomplished, the line is erased, points are earned, and more of the game board is available for play. But if the pieces accumulate and reach the top of the screen, then the game is over. These then are the general, abstract ideas underlying Tetris and cannot be protected by copyright nor can expressive elements that are inseparable from them. [Indeed, in the past few years, many Tetris look-alike versions have been released: just search them on Google]

The parties argued over a number of particular features of both games, which the judge 

Will a 'common user' get upset when he finds out
 that his new videogame is an old game's clone?  

found it appropriate to compare as they would appear to a layman concentrating upon the gross features rather than an examination of minutiae. The conclusion was in the sense that:

Without being told which is which, a 
common user could not decipher between the two games. Any differences between the two are slight and insignificant. If one has to squint to find distinctions only at a granular level, then the works are likely to be substantially similar. Reviewing the videos of the game play bolsters this conclusion as it is apparent that the overall look and feel of the two games is identical. There is such similarity between the visual expression of Tetris and Mino that it is akin to literal copying ... In particular, the style of the pieces is nearly indistinguishable, both in their look and in the manner they move, rotate, fall, and behave. Similar bright colors are used in each program, the pieces are composed of individually delineated bricks, each brick is given an interior border to suggest texture, and shading and gradation of color are used in substantially similar ways to suggest light is being cast onto the pieces. 

This decision is important, in that it further clarifies (also in theoretical terms) the scope of copyright protection for computer programs (in particular videogames), as well as the relationship between the idea/expression dichotomy, merger, and scènes à faire.

As observed by Jack Schecter, the case demonstrates that “the critical fight with clones will be over the appropriate level of abstraction of the game mechanics and gameplay. The Tetris developer’s victory was almost assured once it persuaded the court to identify the underlying game rules and gameplay at a very high level. Having adopted a relatively high-level understanding of the idea of Tetris, the court could readily identify more detailed, granular expressions of that idea that qualified for copyright protection.” 
In any case, what seemed decisive to the actual finding that Xio had infringed Tetris Holding’s copyright were the similarities in the look and feel of the two games (which were held to be tantamount to literal copying), rather than sole reliance on the idea/expression dichotomy.