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Critical analysis of the idea expression dichotomy in copyright law

1. INTRODUCTION

The central axiom governing copyright law is the concept of “idea expression dichotomy”. It protects only original expression of ideas and not the idea in itself. The main reason why ideas are not copyrighted is, because such protection would hinder the free exchange of ideas and thereby go against the very object of copyright laws, which is to promote creativity.Hence, ideas, systems and methods are considered to be “the common property of the whole world” and an author has the right to express or explain them in his own way.”[1]

This concept stemmed from Common Law. The origins of idea-expression dichotomy can be traced back to the decision of the US Supreme court in the case of Baker v. Seldon[2], where Seldon obtained copyright for a book disclosing bookkeeping system. Baker also published a book on accounting similar to that of plaintiff’s but made a different arrangement of columns and headings. The court held that “there is a clear distinction between the book, as such, and the art which it is intended to illustrate.  The former could be copyrighted, the latter could not.”. It thereby distinguished the copyrightability of an expression of an idea from the idea itself bringing into limelight idea-expression dichotomy which is the governing rule in copyright law.

 This leads to the conclusion that no matter how brilliant an idea is it cannot be copyrighted unless it is expressed in a particular form. A person might have a creative idea of a story or play in his mind.  Without putting the idea into a tangible medium of expression such as script or writing, if the owner of  idea informs that to another author or a playwright who in turn produces a play from the communication of this basic idea, then the copyright of the work would belong to the artist who has clothed the idea in the form of expression and the person who actually owns the idea has no right in such work[3].

The dichotomy principle per se has no issues as such. The problem arises when, it is implemented in deciding cases of copyright infringement. The major issue with the concept is that it leaves a lot of space for ambiguity and this leads to arbitrariness in interpretation and application of the dichotomy principle. The three main arguments that favour the argument that this principle has to be relinquished by the courts while deciding copyright infringement cases, are as mentioned below:

  • Existing uncertainty and ambiguity;
  • Limitations of merger and scenes-a-faire;
  • Division of dichotomy.

2. BACKGROUND

Idea expression dichotomy is justified through property rights theories, more significantly the natural rights/labour theory and personality theory. The labour theory relies on two main principles:

  1. A person has a natural right over his creation that stems from his/her skill, intellect and labour. Here, labour is interpreted as expressions that arise from the creativity and efforts of artists and not mere ideas.
  2. If ‘enough and good’ products are left for the other commoners[4] it would attribute to the dichotomy again since ideas are set to be in the public domain. Ideas are general and their protection will create a monopoly obstructing an exchange of ideas which in turn would hinder creation.

Personality theory, on the other hand purports that, a creation belongs to the creator since it is a manifestation of the creator’s personality or self. An author expresses his idea through an art. Such expression is the extension of his personality which is copyrightable.

The dichotomy was also recognised in the TRIPS agreement in relation to the Berne convention. It states that Copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such.[5]The law later got incorporated into other legal systems. Therefore, the principle of dichotomy is engrained in international law and is a universally applicable doctrine.

In the Indian scenario, there is no direct reference to the principle of dichotomy. However, it has been engrained in Sec.13 of the Indian Copyright Act which states that a copyright shall subsist only in original literary, dramatic, musical and artistic works, cinematograph films and sound recordings.[6] The underlying principle of the provision is the doctrine of idea expression dichotomy. The definition, original, literary, dramatic, musical and artistic works which are the subject matter of copyright clearly through the nature of the definitions under Sec.2 show that the only manner in which a copyright can subsist over a particular is through expressions.  Further, in the case of RG Anand v. Deluxe Films[7] the Supreme Court judicially interpreted and established the standpoint of idea-expression dichotomy in India.

3. INADEQUACIES OF THE DICHOTOMY

3.1. Uncertainty and Ambiguity

The distinction between ideas and their expression “will seem arbitrary” no matter where it is drawn[8]. JusticeHand suggested that the line between ideas and their expression is “vague”, so much so that “no principle can be stated as to when an imitator has gone beyond copying the ‘idea’ and has borrowed its ‘expression’.[9] Researchers and commentators in the legal regime have put forth the view that there aren’t really bright lines demarcating the protected and the unprotected parts of the idea and its expression. The dichotomy offers vague guidance in determining what is an idea as opposing to an expression.[10] It further complicates infringement cases by relying upon an irrelevant notion of “abstracting” ideas from expressions.[11] In determining whether or not the copyright infringement has occurred, lawyers have to rely on two vague doctrines:

  • The doctrines claiming that there is no copyright infringement unless the whole or a substantial part of the work is copied; and
  • The doctrine of idea-expression dichotomy.[12]

Nevertheless, the courts generally do not examine the doctrine in detail and if ever examined, rarely is the doctrine actually decisive of particular cases. It seems to be a retroactive characterisation that justifies an outcome based on other, more concrete, factors. Thus, if the result in a particular case is infringement, the work is deemed to be a protectable expression and if the outcome is not an infringement, then the work is described as an “idea”.[13]

Justice Lloyd said that no clear rule can be laid down to divide the protected from the unprotected.[14] The emergence of programming and software further complicated the system where ideas and expressions seem to be almost inseparable. In multiple cases where the idea and expression are inseparable it becomes a merger and is usually denied protection by the courts. A copyrightability issue in computer software is still widely debated due to this issue. Several arguments have arisen which entitle that idea expression in computer software should be seen differently and be given a broader view or interpretation.

3.2. Limitations of Dichotomy

3.2.1. Doctrine of merger

An exception to the dichotomy theory is the ‘doctrine of merger’. This doctrine is applied when idea and its expression are merged in such a way that they are indistinguishable from each other. More specifically, when there exists only one way to express the idea and the idea and expression are perfectly merged together, it leads to the idea getting copyrighted as a result of severability. Such a connection between idea and expression would contravene the notion of protection of original expression and unfairly grant a monopoly to the author, banning others from expressing the idea.[15] For instance, the manufacture of bee shaped jewel pins was denied copyright protection, due to the limited number of ways in which a jewel pin can be created. “The court held that the jewel shaped bee pin was an idea that anyone was free to copy, the expression of which could be possible only in a few ways; therefore, no copyright could subsist in it.”[16] 

The problem presented by the merger theory is that it acts as a limitation and restricts copyrightability of works in spite of the work being an original expression of the idea. The author is denied copyright solely on the grounds that the idea is inseparable from the expression and subsequent creators have a fair chance of copying the same expression. Hence, it may be understood that the merger is a defence for the court to deny copyright protection and there’s high probability of misuse of this doctrine and for it to be highly misleading. A US court opined that, “the majority of cases have rejected the [merger as defence only] approach and instead followed the method…under which merger is used as a reason for denying all copyright protection to the plaintiff and thereby excusing the defendant’s use of a similar or even identical expression”.[17]

As said earlier Merger gives rise to copyrightability issue since it has been employed as a defence, for rejecting copyright. The U.S.  Copyright Office Practices identifies merger as one of the bases on which the Office may refuse applications for registrations. In fact, the Office at times has refused to register claims of copyright in works that it regarded as instances of idea/expression merger.[18] The Office once refused to register a claim of copyright in the Pong videogame because the Office regarded the simple paddle and ball game as dictated by functionality.[19]

3.2.2. Scenes-a-faire :

The other doctrine that gains momentum while discussing the problem of idea expression dichotomy is the doctrine of scenes à faire . It holds that certain common stock of expressions are unprotectable because they are customary to a particular genre. An idea can be expressed only in a particular or limited way. Scenes à faire  include stock scenes, scenes that arise naturally from the logic of a situation and so on. For instance, if the genre of a movie is based on monarchy or the rule of a King, scenes depicting a court room; war fights; a love relationship between the King and Queen are all intrinsic to the theme. In such a situation, copyright infringement cannot be claimed based on these similarities. The drawback here, is that, when this doctrine applies, even similarities in expression that are a by-product of copying is not always actionable. This doctrine was originated in the US case of Cain v. Universal Pictures [20] wherein it was recognized that while there were similarities between the plaintiff’s story and the defendant’s movie, the similarities cannot be held to be copyright infringement because the scenes in question were an unavoidable part of the theme or such genre. While Indian copyright law does not explicitly refer to the concept of scenes à faire , the Courts follow the US doctrine of scenes à faire . In Twentieth Century Fox Film Corporation v. NRI Film Production Associates,[21] it was observed that when same/similar ideas are developed in different manners, there are bound to be similarities.

The main criticism against both these doctrines is that the Indian Court, similar to other courts have failed to draw the right line between an Idea and an Expression. Improperly characterizing the idea behind a work can lead to an erroneous finding of lack of infringement.[22] The merger and scenes à faire doctrines were improperly applied by the Kolkata High Court in the decision of Bradford v Sahara Media Entertainment. Barbara Taylor Bradford, an English novelist claimed that her famous novel, “The Woman of Substance”, has been copied into the Indian television series called ‘Karishma—The Miracle of Destiny’. The court held that Bradford did not have a copyright, reasoning that the subject matter was “too common”, the plaintiff was denied monopoly over the idea of a poor woman, having gone through an early burdened life, raising an illegitimate child, besides having a lifelong friend, marrying an army officer and eventually becoming successful in the end. The theme falls under the umbrella of ‘woman of a substance’ which is very common and therefore cannot be copyrighted as it will obstruct free exercise of artistic skill of such idea.[23]

In this case the court unfortunately categorized Bradford’s expression of idea as an abstract idea. It inappropriately merged the novel’s idea and the expression ruling that, the plotline was not copyrightable. In spite of finding substantial number of specific elements in the story, the court still concluded that the plaintiff’s novel did not really qualify as an original expression of an idea. The plot was improperly dismissed as “too common” under scenes à faire. The court’s reasoning was in contrast to both domestic and international copyright law doctrines. And the inappropriate merger of idea and expression serves as an example of Indian judicial disdain for Western intellectual property claimants. [24]    

3.2.3. Divided dichotomy

The ideal position of law with respect to the idea expression divide was set by the supreme court in RG Anand case. Plaintiff in this case claimed copyright infringement over his play ‘Hum Hindustani’ by defendant who produced a motion picture on similar lines called ‘New Delhi’. Where both the works of the authors revolved around the theme of provincialism with similarities and differences,  the court held that the film produced by the defendants cannot be said to be a substantial copy of the play and have not committed an act of piracy because of differences in story, theme, characterization and climaxes. The similarities and coincidences of the film did not qualify to fulfil the essential of colourable imitation. A case for infringement may be made out only when such infringement may be identifiable by a reasonable man which has not been proven in the present case. The Supreme Court dismissed the appeal. The fundamental principles established in the case with regard to infringement of copyright in case of substantial similarity is applied in Indian courts till date. The 7-rule test was laid down and the first and the most important rule is that “There can be no copyright for an idea, subject-matter, themes, plots or historical or legendary facts and violation of the copyright in such cases, is confined to the form, manner, arrangement and expression of the idea by the author of the copyrighted work”.[25]

However, the natural question that arises is whether the high courts and other lower courts have consistently applied and reaffirmed this precedent set by the Supreme court. No. The lower courts have not religiously ordained the precedent as the Bombay High Court, in a recent decision, has renounced this rule by extending copyright protection to a theme. In Shamoil Ahmad Khan v. Falguni Shah & Ors.,[26] the plaintiff is a playwright. He wrote a story titled “Singardaan” and published it in a magazine in 1996, he made a copy of his story in different languages and turned it into a play as well. The defendants released a web series called Singardaan, online. Plaintiff claimed that the makers of web series had copied his plot, story and characters along with the title. The court made a detailed study of both the movie and the web series and took into consideration all the intricate facts and similarities. While comparing both the works, it was observed by the court that the web series has copied substantially from the theme, plot and storyline of the plaintiff’s story. It also passed the substantial test whereby when a person reads both the work, he/her will be of a sure opinion that there exists extensive similarity in both the work. Although in the Deluxe case it was held that theme cannot be the subject matter of copyright, this case went against the regular observation. Even if it is argued that it was the factual nature of the case because of which the themes were protected, ultimately the legitimacy of the principle applied is in question.

In order to resolve the problem presented by idea expression dichotomy it becomes imperative to look into another core principle in copyright law – Originality.

4. DOCTRINE OF ORIGINALITY:

Originality is the “sine qua non” of copyright.[27] It is the core of copyrightability. The fundamental requirements of originality is that it must be fixed in a tangible medium of expression and it should constitute an original work of authorship. Originality doesn’t require the work to be novel as in patent, rather it must initiate from the author, who exercises “the skill, labour and judgment” to produce such work. This test of originality is considered as a “De-minims threshold”.[28] The concept of originality in itself is comprehensive in dealing with copyright infringement as it also comprises of Substantial similarity and Fair use doctrines in such a way that no more requisites are essential.  

  • Comparison of US, UK & EU :

In order to rely on the originality concept, it is necessary to look at the emphasis other legal systems have given to originality. In the US, The Copyright Act, 1976 is engrained in title 17 of the United States code where the subject matter of copyright has been defined as follows “Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression”.[29] The US copyright law swears by  the Modicum of Creativity doctrine with respect to originality in copyright law.

It was established in the case of Feist Publications, Inc. v. Rural Telephone Service, Co.[30]  the Supreme court while deciding whether or not a telephone directory published by a company is copyrightable or not, held that “To qualify for copyright protection, a work must be original to the author, the work must be “independently created by the author” and it must possess “at least some minimal degree of creativity”.[31] Here, the quantum of creativity required is very minimal.

On the other hand, the UK copyright law relies of the Sweat of the Brow doctrine. It attributes work created as a result of labour (sweat) and efforts, with no requirement for creativity. The European Union (EU) law of copyright is deep rooted in the concept of originality. The standpoint of law is that copyright only subsists in work that is original in the sense that it is the author’s own ‘intellectual creation’. It’s been said that the formulation chosen by European lawmakers is clever because it is often read in two alternative ways

  1.  It reflects the personality of author
  2. The creation is the author’s own, simply if the author is the originator, that is, if he/she has not copied. This is closer to the traditional U.K test.[32]

In a recent case it was held by the ECJ that, “There must be an element of novelty or merit in an author’s creation: in doing so, it can be argued that for an expression to be protected it must originate from an original idea. If so, this provides the implication that the original idea warrants protection in itself.”

Thus, the doctrine of originality happens to be well grounded and a proper axiom for protecting original works of authorship. It is not that expressions of ideas that are protectible but merely original and creative expressions alone are protectible.[33]

5. CONCLUSION AND RECOMMENDATIONS:

To sum up the criticisms of the dichotomy, firstly there’s lack of certainty within the law concerning idea expression dichotomy. The only law with reference to this is often the Berne Convention, which also doesn’t state clearly in terms of excluding ideas from copyright protection.[34]

Secondly, a stronger dispute developed by critics of the dichotomy is that it’s not an efficient tool for overcoming copyright dispute. It is asserted that such a ambiguous principle must not be solely relied upon in deciding copyright infringement cases. Thus, the arbitrariness of the so-called core principle of copyright law and its inefficiency when applied by the courts, has been clearly established.

It is recommended that, so as to overcome the problem presented by the dichotomy, the originality concept by and large must replace the former in determining a copyright infringement.

The courts must employ firmer policy doctrines such as the originality doctrine with a negligible consideration of the requirement of expression wherein the expression required by the idea-expression dichotomy should form minimal part.

Similar to the test of originality, a work should require only a modest expressive content to be copyrightable. Even if a work embodies a reflection of what might be called idea, it should still be entitled to protection to the extent that it embodies expression[35] so that, copyright is granted to original works as well.


[1] Baker v. Selden, 101 U.S. 99 (1879).

[2] Supra.

[3] Mahfud & Faisal A. Rani, “The Idea-Expression Dichotomy in Artistic Works: The Case Study in the United Kingdom.” Vol.25 JIPR (2020).

[4] Adam D. Moore & Ken Einar Himma, “Intellectual Property“, THE STANFORD ENCYCLOPAEDIA OF PHILOSOPHY (Winter 2018 Edn), Edward N. Zalta (ed.), (Mar 04, 2021 , 7.15 PM ), https://poseidon01.ssrn.com/delivery.php?ID=033064094066084083107088122071078125028059005053019029122064099125113102107000092100056013012059041007046067100127070124018021112048062045006096006112112097111006017002003068109106072092089116009100068091116014001100015101010089001110127112013003082&EXT=pdf&INDEX=TRUE.

[5] Trade Related Aspects of Intellectual Property Rights, Art 9, cl. 2.

[6] The Copyright Act, 1957, No. , Acts of Parliament, 1957, Sec.13, cl.1.

[7] R.G. Anand v. Deluxe Films and Ors., AIR 1978 SC 1613.

[8] Nichols v. Universal Pictures Corp., 282 U.S. 902, (1931).

[9] Peter Pan Fabrics v. Martin Weiner Corp, 274 F.2d 487.

[10] Oila J, Copyright and its categories of original work, 30 OJLS, (2), 229-254 (2010).

[11] Richard H. Jones, The Myth of the Idea/Expression Dichotomy in Copyright Law, 10 PACE L. REV. 551 (1990).

[12] Spencer M & Endicott T, Vagueness in the scope of copyright, Law Q Rev., 121, 657-680 (2005).

[13] Amit Agnihotri, A Critical Review of the Idea/Expression Dichotomy in Copyright Law, 1 Public Affairs And Governance 137 (2013).

[14] Baigent v. The Random House Group Ltd [2007] EWCA Civ 247, [2007] F.S.R. 24.

[15] Sandro Ocasio, Pruning Para-copyright Protections: Why Courts Should Apply the Merger and Scenes à faire  Doctrines at the Copyrightability Stage of the Copyright Infringement Analysis, 3 SETON HALL CIR. REV. 303 (2006).

[16] Herbert Rosenthal Jewelry Corp v. Kalpakian 446 F.2d 738 (1971).

[17] Kregos v. Associated Press, 937 F.2d 700 ( 1991).

[18] Pamela Samuelson, Reconceptualizing Copyright’s Merger Doctrine, 63 J. COPYRIGHT Soc’y U.S.A. 417 (2016).

[19] Atari Games Corporation v. Oman, 888 F.2d 878 (1989).

[20] 47 F.Supp. 1013 (1942)

[21] AIR 2003 Kant 148, 2003 (5) KarLJ 98.

[22] Arjun Shah, Is Bollywood Unlawfully Copying Hollywood? Why? What has Been Done About It? And How Can It Be Stopped?, 26 Emory Int’l LR, 449 (2012), https://scholarlycommons.law.emory.edu/eilr/vol26/iss1/15

[23] Barbara Taylor Bradford v. Sahara Media Entertainment Ltd., 2004 (1) CHN 448, 2003 SCL 445 Cal.

[24] supra 21.

[25] supra 7.

[26] 2020 (82) PTC 577 (Bom).

[27] Kamar International, Inc. v. Russ Berrie & Co., 657 F.2d 1059, 1061 (9th Cir. 1981).

[28] LIONEL BENTLY & BRAD SHERMAN, “INTELLECTUAL PROPERTY” 92 (2nd ed., Oxford University Press 2001).

[29] 17 U.S.C. § 102 (1994).

[30] 499 U.S. 340 (1991).

[31] Feist Publications Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991).

[32] Elizabeth F. Judge & Daniel Gervais, Of Silos and Constellations: Comparing Notions of Originality in Copyright Law, 27 CARDOZO Arts & Ent. L.J. 375 (2009).

[33] Allen Rosen, Reconsidering the Idea/Expression Dichotomy, 26 U. BRIT. COLUM. L. REV. 263 (1992).

[34] Masiyakurima P, The futility of the idea expression dichotomy in UK Copyright Law, International Review of Industrial Property and Copyright Law, 38 (5) (2007) 549.

[35] Edward Samuels, The Idea-Expression Dichotomy in Copyright Law, 56 Tenn. L. Rev. 321 (1989).


Cite this article (The Bluebook 20th ed.)-

Evelyn Jeniffer Ilakiya S, Critical analysis of the idea expression dichotomy in copyright law, Ex Gratia Law Journal, (April 1, 2021), https://exgratialawjournal.in/journal/volume-2/volume-2-issue-2/critical-analysis-of-the-idea-expression-dichotomy-in-copyright-law-by-evelyn-jeniffer-ilakiya-s/.


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Author

Evelyn Jeniffer Ilakiya S
Student - School of law, Christ (Deemed to be) University