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University of Dayton School of Law
Reilly, Tracy

Prof. Reilly – Fall 2011
Section 102. Subject Matter of Copyright: In General
·         Section 102 established three requirements for copyrightable subject matter.
(1) The work for which protection is sought much be “fixed” in a tangible medium of expression.
(2) It must be an “original work of authorship.”
(3) And final requirement is a negative one: Copyright protection for a work that is both fixed and original will not extend to elements of the work that constitute ideas, procedures and the life.
o   In other words, copyright protections does not attach to every element of the work.
Certain items are categorically excluded from receiving copyright protection.
According to Section 102(b): “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”
102b is often described as: An idea can never be copyrightable, but its expression may be. (the term idea is shorthand for a variety of noncopyrightable elements.
102(b) seems to have two purposes:
(1) To define the line between what is eligible for copyright protection and what belongs to the public domain; and
(2) To define the line between copyrightable and patentable subject matter.
Many countries’ laws have similar provisions.
Unlike the originality requirement, however, the idea/expression dichotomy is also enshrined in the major international copyright treaties.
The Berne Convention specifies that copyright protection should “not apply to news of the day or to miscellaneous facts having the character of mere items of press information.”
Both the TRIPS Agreement and WIPO Copyright Treat state, in almost identical language, that copyright protection extends “to expressions and not to ideas, procedures, methods of operation or mathematical concepts.”
Why does the idea/expression dichotomy command such universal support?
Feist Publications, Inc. v. Rural Telephone Service Co.
Did not tell us what kind of selection/arrangement will suffice.
Feist used Rural’s white page listings without consent.
This case concerns the interaction of two well-established propositions. The first is that facts are not copyrightable, the other, that compilations of facts generally are.
Originality is a constitutional requirement.
Baker v. Seldon
landmark case for idea/expression dichotomy
Baker was sued, Seldon had a copyright on the book
Why are forms not copyrightable? – Section 102(b). This form is a way of making accountants lives’ easier by putting procedures on a page. This could be looked at as a process.
Books can be lawfully copyrighted.
The Actual process was not copyrightable (the Bookkeeping method – not copyrightable) – that should have been patented!
Copyright the expression of the idea in a book but not the method or process.
“The description of the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art itself. The object of the one is explanation, the object of the other is use. The former may be secured by copyright. The latter can only be secured, if it can be secured at all, by letters-patent.”
Section 102 (b) codifies the fact-expression dichotomy, that blank forms are not copyrightable, even if the structure of the forms captures the essence of an original work of literature. The book was protected as original literary expression but the form was a means of putting the book’s ideas only practice and copyright law, unlike patent law, covers only expression. Someone who buys a book full of ideas for new machines may build and sell one of the machines without infringing the authors’ copyright.
Complications – within copyright law, the conceptual difficulties in separating idea from protectable expression are substantial.
American Dental Association v. Delta Dental Plans Association
Published taxonomy – fixed in a tangible medium of expression
Copyright registration
Suit: own publication was put out using all the same numbers, etc.
The district court agreed but the Appellate Court reversed saying that taxonomy is copyrightable.
Why is taxonomy copyrightable?
The classification is a creative endeavor. All three elements of the ADA’s code, the numbers, short descriptions, and long descriptions, are copyrightable subject matter under 102(a).
The code is not a system per 102(b). The Code is a taxonomy (arrangement), which may be put to many uses. These uses may be or include systems, the Code is not.
How do we get past 102(a) and (b) and the forms? Baker Case
If there is only one way to do things, it cannot be copyrighted because then no one else could use it because it would be out of the public domain. This would not encourage anyone to come up with new things and they could not use the copyrighted forms. This would demote and not promote the progress of science and the useful arts – which is the purpose of copyright.
***Merger Doctrine – a merger of an idea and an expression – acknowledging that sometimes and idea can only be expressed in one or a limited number of ways, with no way to separate the idea and the expression and no way to cross over to the copyright realm. So the work is not protectable at all.
(1) Facts + Process = Merger
(2) Literary = Scenes a Faire
The Idea/Expression Dichotomy (when do you cross over?)
Idea ———————————————–à
Protected by patents
Fix an idea and write it down for copyright protection
– This dichotomy is more like a guideline to find out where on that spectrum your client’s work falls.
Subject matter that is not copyrightable. 37 CFR section

de flexibility as new technologies developed: “Under the bill, it makes no difference what the form, manner, or medium of fixation may be-whether it is in works, numbers, notes, sounds, pictures, or any other graphic or symbolic indicia…”
§  Under this new statutory language, mechanical reproductions of preexisting musical composition qualify as fixed.
·         The second requirement for copyrightability is that a work be a “original work of authorship.” 17 USC 102(a)
·         Neither the Berne Convention nor the TRIPS agreement expressly imposes any requirement of originality or creativity, although both agreements assume an authorial presence.
o   Nearly all countries require some level of creativity as a prerequisite for copyright protection
§  Because it would not make sense to grant someone exclusive rights to someone who merely copies a preexisting work.
·         Congress attempted a comprehensive statement of the sorts of works entitled to copyright protection, “section 4 of the 1909 Act provided that “the works for which copyright may be secured under this title shall include all the writings of the author.”
·         In the 1976 Act, Congress deliberately chose different language – “original works of authorship.” The 1976 Act does not indicate exactly what Congress meant by original works of authorship. According to legislative history, the phrase original works of authorship, which was purposely left undefined, was intended to incorporate without change the standard of originality established by the courts under the 1909 Act. This standard does not include requirements of novelty, ingenuity, or esthetic merit, and there is no intention to enlarge the standard of copyright protection to require them. The task of interpreting the scope of grant of copyright protection was left to the courts.
Originality 2 prongs =
(1) Independently created (not copied)
(2) Some kind of low modicum of creativity (marginally original)
Feist – “an original literary work may be copyrighted. The necessary degree of originality is low, and the work need not be aesthetically pleasing to be literary.”
PURPOSE of Copyright
To promote progress, science, and the useful arts and to reward the labor of the author.
If the author has not labored, the society will not be enriched by the work and it will not be copyrightable.