Class 6: The Idea/Expression Dichotomy

The Idea/Expression Dichotomy

In Class 3, we learned that copyright can protect an expression of an idea, but cannot protect the idea itself. This idea/expression dichotomy began as a common law rule. Eventually, Congress codified the idea/expression dichotomy in Section 102(b) of the Copyright Act, which provides:

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.

17 U.S.C. § 102(b).

The author of a work can protect an idea expressed in the work only by keeping the work secret. As soon as a work is published, all of the ideas expressed in the work enter the public domain. Copyright can only protect the author's particular expression of those ideas. As the Supreme Court explained in Feist v. Rural, 499 U.S. 340, 349-50 (1991):

The primary objective of copyright is not to reward the labor of authors, but "to promote the Progress of Science and useful Arts." Art. I, § 8, cl. 8. Accord Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975). To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work. Harper & Row, supra, at 556-557. This principle, known as the idea-expression or fact-expression dichotomy, applies to all works of authorship.

The purpose of the idea/expression dichotomy is to ensure that copyright law balances the value of innovation against the value of competition. As the court observed in Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir.1971):

The critical distinction between "idea" and "expression" is difficult to draw. As Judge Hand candidly wrote, "Obviously, no principle can be stated as to when an imitator has gone beyond copying the 'idea,' and has borrowed its 'expression.'" Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960). At least in close cases, one may suspect, the classification the court selects may simply state the result reached rather than the reason for it. In our view, the difference is really one of degree as Judge Hand suggested in his striking "abstraction" formulation in Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930). The guiding consideration in drawing the line is the preservation of the balance between competition and protection reflected in the patent and copyright laws.

But what is an idea, as opposed to the expression of an idea? The Copyright Act defines neither "idea" nor "expression," and allows the federal courts to apply the idea/expression dichotomy under the common law. Essentially, courts hearing infringement actions must determine whether the defendant has copied an unprotected idea, or a protected expression. In other words, courts must make an ad hoc, fact-specific determination whether an allegedly infringing work copied ideas or expressions.

Questions:

1. While copyright cannot protect facts, it can protect a compilation of facts, or a particular selection, organization, or arrangement of facts. Can copyright protect a compilation of ideas?
2. In theory, the idea/expression dichotomy should strike a balance between the competing interests of encouraging innovation and protecting free speech. Where would you draw the line?

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

MR. JUSTICE BRADLEY delivered the opinion of the Court. 

Charles Selden, the testator of the complainant in this case, in the year 1859 took the requisite steps for obtaining the copyright of a book, entitled "Selden's Condensed Ledger, or Bookkeeping Simplified," the object of which was to exhibit and explain a peculiar system of bookkeeping. In 1860 and 1861, he took the copyright of several other books, containing additions to and improvements upon the said system. The bill of complaint was filed against the defendant, Baker, for an alleged infringement of these copyrights. The latter, in his answer, denied that Selden was the author or designer of the books, and denied the infringement charged, and contends on the argument that the matter alleged to be infringed is not a lawful subject of copyright. 

The parties went into proofs, and the various books of the complainant, as well as those sold and used by the defendant, were exhibited before the examiner, and witnesses were examined to both sides. A decree was rendered for the complainant, and the defendant appealed. 

The book or series of books of which the complainant claims the copyright consists of an introductory essay explaining the system of bookkeeping referred to, to which are annexed certain forms or banks, consisting of ruled lines, and headings, illustrating the system and showing how it is to be used and carried out in practice. This system effects the same results as bookkeeping by double entry, but, by a peculiar arrangement of columns and headings, presents the entire operation, of a day, a week, or a month on a single page or on two pages facing each other, in an account book. The defendant uses a similar plan so far as results are concerned, but makes a different arrangement of the columns, and uses different headings. If the complainant's testator had the exclusive right to the use of the system explained in his book, it would be difficult to contend that the defendant does not infringe it, notwithstanding the difference in his form of arrangement; but if it be assumed that the system is open to public use, it seems to be equally difficult to contend that the books made and sold by the defendant are a violation of the copyright of the complainant's book considered merely as a book explanatory of the system. Where the truths of a science or the methods of an art are the common property of the whole world, any author has the right to express the one, or explain and use the other, in his own way. As an author, Selden explained the system in a particular way. It may be conceded that Baker makes and uses account books arranged on substantially the same system, but the proof fails to show that he has violated the copyright of Selden's book, regarding the latter merely as an explanatory work, or that he has infringed Selden's right in any way, unless the latter became entitled to an exclusive right in the system. 

The evidence of the complainant is principally directed to the object of showing that Baker uses the same system as that which is explained and illustrated in Selden's books. It becomes important, therefore, to determine whether, in obtaining the copyright of his books, he secured the exclusive right to the use of the system or method of bookkeeping which the said books are intended to illustrate and explain. It is contended that he has secured such exclusive right because no one can use the system without using substantially the same ruled lines and headings which he was appended to his books in illustration of it. 

In other words, it is contended that the ruled lines and headings, given to illustrate the system, are a part of the book, and as such are secured by the copyright, and that no one can make or use similar ruled lines and headings, or ruled lines and headings made and arranged on substantially the same system, without violating the copyright. And this is really the question to be decided in this case. Stated in another form, the question is whether the exclusive property in a system of bookkeeping can be claimed under the law or copyright by means of a book in which that system is explained? The complainant's bill, and the case made under it, are based on the hypothesis that it can be. 

It cannot be pretended, and indeed it is not seriously urged, that the ruled lines of the complainant's account book can be claimed under any special class of objects, other than books, named in the law of copyright existing in 1859. The law then in force was that of 1831, and specified only books, maps, charts, musical compositions, prints, and engravings. An account book, consisting of ruled lines and blank columns, cannot be called by any of these names unless by that of a book. 

There is no doubt that a work on the subject of bookkeeping, though only explanatory of well known systems, may be the subject of a copyright, but then it is claimed only as a book. Such a book may be explanatory either of old systems or of an entirely new system, and, considered as a book, as the work of an author, conveying information on the subject of bookkeeping, and containing detailed explanations of the art, it may be a very valuable acquisition to the practical knowledge of the community. But there is a clear distinction between the book as such and the art which it is intended to illustrate. The mere statement of the proposition is so evident that it requires hardly any argument to support it. The same distinction may be predicated of every other art as well as that of bookkeeping. A treatise on the composition and use of medicines, be they old or new; on the construction and use of ploughs, or watches, or churns; or on the mixture and application of colors for painting or dyeing; or on the mode of drawing lines to produce the effect of perspective -- would be the subject of copyright; but no one would contend that the copyright of the treatise would give the exclusive right to the art or manufacture described therein. The copyright of the book, if not pirated from other works, would be valid without regard to the novelty, or want of novelty, of its subject matter. The novelty of the art or thing described or explained has nothing to do with the validity of the copyright. To give to the author of the book an exclusive property in the art described therein when no examination of its novelty has ever been officially made would be a surprise and a fraud upon the public. That is the province of letters patent, not of copyright. The claim to an invention or discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained, and it can only be secured by a patent from the government. 

The difference between the two things, letters patent and copyright, may be illustrated by reference to the subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great value in the healing art. If the discoverer writes and publishes a book on the subject (as regular physicians generally do), he gains no exclusive right to the manufacture and sale of the medicine; he gives that to the public. If he desires to acquire such exclusive right, he must obtain a patent for the mixture as a new art, manufacture, or composition of matter. He may copyright his book if he pleases, but that only secures to him the exclusive right of printing and publishing his book. So of all other inventions or discoveries. 

The copyright of a book on perspective, no matter how many drawings and illustrations it may contain, gives no exclusive right to the modes of drawing described, though they may never have been known or used before. By publishing the book without getting a patent for the art, the latter is given to the public. The fact that the art described in the book by illustrations of lines and figures which are reproduced in practice in the application of the art makes no difference. Those illustrations are the mere language employed by the author to convey his ideas more clearly. Had he used words of description instead of diagrams (which merely stand in the place of words), there could not be the slightest doubt that others, applying the art to practical use, might lawfully draw the lines and diagrams which were in the author's mind, and which he thus described by words in his book. 

The copyright of a work on mathematical science cannot give to the author an exclusive right to the methods of operation which he propounds, or to the diagrams which he employs to explain them, so as to prevent an engineer from using them whenever occasion requires. The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book. And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public -- not given for the purpose of publication in other works explanatory of the art, but for the purpose of practical application. 

Of course these observations are not intended to apply to ornamental designs or pictorial illustrations addressed to the taste. Of these it may be said that their form is their essence, and their object, the production of pleasure in their contemplation. This is their final end. They are as much the product of genius and the result of composition as are the lines of the poet or the historian's period. On the other hand, the teachings of science and the rules and methods of useful art have their final end in application and use, and this application and use are what the public derive from the publication of a book which teaches them. But as embodied and taught in a literary composition or book, their essence consists only in their statement. This alone is what is secured by the copyright. The use by another of the same methods of statement, whether in words or illustrations, in a book published for teaching the art would undoubtedly be an infringement of the copyright. 

Recurring to the case before us, we observe that Charles Selden, by his books, explained and described a peculiar system of bookkeeping, and illustrated his method by means of ruled lines and blank columns, with proper headings on a page or on successive pages. 

Now whilst no one has a right to print or publish his book, or any material part thereof, as a book intended to convey instruction in the art, any person may practice and use the art itself which he has described and illustrated therein. The use of the art is a totally different thing from a publication of the book explaining it. The copyright of a book on bookkeeping cannot secure the exclusive right to make, sell, and use account books prepared upon the plan set forth in such book. Whether the art might or might not have been patented is a question which is not before us. It was not patented, and is open and free to the use of the public. And of course, in using the art, the ruled lines and headings of accounts must necessarily be used as incident to it. 

The plausibility of the claim put forward by the complainant in this case arises from a confusion of ideas produced by the peculiar nature of the art described in the books which have been made the subject of copyright. In describing the art, the illustrations and diagrams employed happen to correspond more closely than usual with the actual work performed by the operator who uses the art. Those illustrations and diagrams consist of ruled lines and headings of accounts, and it is similar ruled lines and headings of accounts which, in the application of the art, the bookkeeper makes with his pen, or the stationer with his press, whilst in most other cases the diagrams and illustrations can only be represented in concrete forms of wood, metal, stone, or some other physical embodiment. But the principle is the same in all. 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. 

The remarks of Mr. Justice Thompson in the circuit court in Clayton v. Stone & Hall, 2 Paine 392, in which copyright was claimed in a daily price-current, are apposite and instructive. He says: 

"In determining the true construction to be given to the act of Congress, it is proper to look at the Constitution of the United States to aid us in ascertaining the nature of the property intended to be protected. 'Congress shall have power to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their writings and discoveries.' The act in question was passed in execution of the power here given, and the object, therefore, was the promotion of science; and it would certainly be a pretty extraordinary view of the sciences to consider a daily or weekly publication of the state of the market as falling within any class of them. They are of a more fixed, permanent, and durable character. The term 'science' cannot with any propriety be applied to a work of so fluctuating and fugitive a form as that of a newspaper or price-current, the subject matter of which is daily changing, and is of mere temporary use. Although great praise may be due to the plaintiffs for their industry and enterprise in publishing this paper, yet the law does not contemplate their being rewarded in this way; it must seek patronage and protection from its utility to the public, and not a work of science. The title of the act of Congress is, 'for the encouragement of learning,' and was not intended for the encouragement of mere industry, unconnected with learning and the sciences. . . . We are accordingly of opinion that the paper in question is not a book the copyright to which can be secured under the act of Congress." 

The case of Cobbett v. Woodward, Law Rep. 14 Eq. 407, was a claim to copyright in a catalogue of furniture which the publisher had on sale in his establishment, illustrated with many drawings of furniture and decorations. The defendants, being dealers in the same business, published a similar book, and copied many of the plaintiff's drawings, though it was shown that they had for sale the articles represented thereby. 

The court held that these drawings were not subjects of copyright. Lord Romilly, M.R., said: 

"This is a mere advertisement for the sale of particular articles which any one might imitate, and any one might advertise for sale. If a man not being a vendor of any of the articles in question were to publish a work for the purpose of informing the public of what was the most convenient species of articles for household furniture, or the most graceful species of decorations for articles of home furniture, what they ought to cost, and where they might be bought, and were to illustrate his work with designs of each article he described -- such a work as this could not be pirated with impunity, and the attempt to do so would be stopped by the injunction of the Court of Chancery; yet if it were done with no such object, but solely for the purpose of advertising particular articles for sale, and promoting the private trade of the publisher by the sale of articles which any other person might sell as well as the first advertiser, and if in fact it contained little more than an illustrated inventory of the contents of a warehouse, I know of no law which, while it would not prevent the second advertiser from selling the same articles, would prevent him from using the same advertisement, provided he did not in such advertisement by any device suggest that he was selling the works and designs of the first advertiser." 

Another case, that of Page v. Wisden, 20 L.T.N.S. 435, which came before Vice-Chancellor Malins in 1869, has some resemblance to the present. There, a copyright was claimed in a cricket scoring sheet, and the Vice-Chancellor held that it was not a fit subject for copyright, partly because it was not new, but also because "to say that a particular mode of ruling a book constituted an object for a copyright is absurd." 

These cases, if not precisely in point, come near to the matter in hand, and, in our view, corroborate the general proposition which we have laid down. 

In Drury v. Ewing, 1 Bond, 540, which is much relied on by the complainant, a copyright was claimed in a chart of patterns for cutting dresses and basques for ladies, and coats, jackets, &c., for boys. It is obvious that such designs could only be printed and published for information, and not for use in themselves. Their practical use could only be exemplified in cloth on the tailor's board and under his shears -- in other words, by the application of a mechanical operation to the cutting of cloth in certain patterns and forms. Surely the exclusive right to this practical use was not reserved to the publisher by his copyright of the chart. Without undertaking to say whether we should or should not concur in the decision in that case, we think it cannot control the present. 

The conclusion to which we have come is that blank account books are not the subject of copyright, and that the mere copyright of Selden's book did not confer upon him the exclusive right to make and use account books, ruled and arranged as designated by him and described and illustrated in said book. 

The decree of the circuit court must be reversed and the cause remanded with instructions to dismiss the complainant's bill, and it is 

So ordered.

Selections from Charles Selden, Selden's Condensed Ledger, and Condensed Memorandum Book, and Forms of Record, Condensed Ledger, Reports, and Condensed Memorandum Book (1861).

Questions:

1. The court states, "It cannot be pretended, and indeed it is not seriously urged, that the ruled lines of the complainant's account book can be claimed under any special class of objects, other than books, named in the law of copyright existing in 1859. The law then in force was that of 1831, and specified only books, maps, charts, musical compositions, prints, and engravings. An account book, consisting of ruled lines and blank columns, cannot be called by any of these names unless by that of a book." Could the charts in Selden's account book be characterized as anything other than a book?
2. The court states, "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." Why aren't the forms in Selden's book protected by copyright as part of his description of his method of bookkeeping? The allegedly infringing work used slightly different forms. Why aren't Selden's forms particular expressions of an idea, if the idea can be expressed in a different way? Is it relevant that accountants using Selden's method of bookkeeping will draw forms based on the ones in his book? Would those hand-drawn forms be infringing works?
3. Presumably, Selden's method of bookkeeping is - or at least was - useful. Is it a problem that his forms cannot be protected by copyright?

The Use/Expression Dichotomy

In Baker v. Selden, the Supreme Court adopted the "use/explanation dichotomy" in order to distinguish between ideas and expressions, holding that copyright cannot protect an element of a work that is necessary to the use of an idea, but can protect an element of a work that explains an idea:

The copyright of a work on mathematical science cannot give to the author an exclusive right to the methods of operation which he propounds, or to the diagrams which he employs to explain them, so as to prevent an engineer from using them whenever occasion requires. The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book. And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public -- not given for the purpose of publication in other works explanatory of the art, but for the purpose of practical application.

101 U.S. 99 (1879)

As a result, copyright could protect the text of Selden's book, which explained his method of bookkeeping, but could not protect the forms in the book, which were necessary to the use of his method of bookkeeping.

The Merger Doctrine

However, most courts have adopted the "merger doctrine" in order to distinguish between ideas and expressions, holding that an element of a work cannot be protected by copyright if it is the only way to express an idea, because the idea and the expression of the idea have "merged." For example, in Kern River Gas Transmission Co. v. Coastal Corporation, 899 F.2d 1458 (5th Cir. 1990), the court held that copyright could not protect a gas company's depiction of its proposed natural gas pipelines on government survey maps, because it was the only way to depict the location of the pipelines:

The doctrine of "merger" developed in an effort to deal with this difficulty in locating the precise boundary between idea and expression. The doctrine holds that when the expression of an idea is inseparable from the idea itself, the expression and idea merge. "When the 'idea' and its 'expression' are thus inseparable, copying the 'expression' will not be barred, since protecting the 'expression' in such circumstances would confer a monopoly of the 'idea' upon the copyright owner free of the conditions and limitations imposed by the patent law." [Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir.1971)] (citing Baker v. Selden, 101 U.S. 99, 103, 25 L.Ed. 841 (1880)). 

Thus, the district court held that the idea of the location of the pipeline and its expression embodied in the 1:250,000 maps are inseparable and not subject to protection. We agree. The idea of the proposed location of a prospective pipeline is not copyrightable.

Map of Kern River Gas Transmission Co. 2010 Expansion Project

Questions:

1. Is the use/expression dichotomy helpful? Is it ever necessary to make an exact copy of an expression in order to use an idea? Could the Court have solved the problem by holding that a distinguishable variation of an expression of an idea is not a copy?
2. What about the merger doctrine? Is it ever the case that there is only one way of expressing an idea?
3. In Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir. 1967), the court held that copyright could not protect the rules for a sweepstakes contest based on the Social Security numbers of the participants, because the idea of the rules merged with the expression of the rules, even though there was more than one way of expressing the rules: "When the uncopyrightable subject matter is very narrow, so that "the topic necessarily requires, Sampson & Murdock Co. v. Seaver-Radford Co., 1 Cir., 1905, 140 F. 539, 541; cf. Kaplan, An Unhurried View of Copyright, 64-65 (1967), if not only one form of expression, at best only a limited number, to permit copyrighting would mean that a party or parties, by copyrighting a mere handful of forms, could exhaust all possibilities of future use of the substance. In such circumstances it does not seem accurate to say that any particular form of expression comes from the subject matter. However, it is necessary to say that the subject matter would be appropriated by permitting the copyrighting of its expression. We cannot recognize copyright as a game of chess in which the public can be checkmated." Do you agree with the court's rationale?

Scènes à faire

Most courts have also adopted the scènes à faire ("scene to be made" or "scene that must be done") doctrine in order to distinguish between the elements of a fictional work that are ideas and those that are expressions of ideas, holding that copyright cannot protect elements like generic plots, incidents, and character traits. For example, the archetypal romantic comedy plot is boy meets girl, boy loses girl, boy regains girl. Under the scènes à faire doctrine, copyright cannot protect this element of a romantic comedy.

Cain v. Universal Pictures, 47 F. Supp. 1013 (S.D. Ca. 1942)

YANKWICH, District Judge.

The plaintiff, James M. Cain, is a well-known writer who has written several novels, among which, perhaps, the best known is "The Postman Always Rings Twice", and a large number of short stories and stories for film production. In 1937, he wrote a novel called "Serenade", which he copyrighted on December 1st of that year. Universal Pictures Corporation, Inc., is a corporation engaged in the production of motion pictures. On November 22, 1938, the plaintiff sold to the film corporation, for the sum of $17,500, a story entitled "Modern Cinderella". The defendant John M. Stahl is a director employed by Universal in the production of motion pictures. The defendant Dwight Taylor is a playwright and scenario writer who, at various times, has been employed by the film company. In 1939, Stahl began the filming of "Modern Cinderella". Difficulties were encountered after a portion of the story was filmed. The need to use a particular contract star, Irene Dunne, arose. And it was determined that the story should be recast so that she and her male lead, Charles Boyer, could be used in the picture. The adaptation of the story began and went through many hands working under the great strain of filming one portion while writing another portion of the story. Suggestions were made and abandoned. Writers and adapters were changed several times. Finally, the adaptation written by Taylor, in consultation with the director, was accepted. The motion picture was completed on July 15, 1939, and released on August 11, 1939, under the title "When Tomorrow Comes". Credit for the screen play was given to Dwight Taylor and the further legend "Based upon an original story by James M. Cain." 

The plaintiff, in his complaint, charges that the motion picture infringes "Serenade". More particularly, he claims that the church sequence in the motion picture is copied from the church sequence in the book. He seeks damages, accounting of profits and injunctive relief against further exhibition of the motion picture. Compliance with the copyright law by legal registration of the book under 17 U.S.C.A. § 1 et seq., is not in dispute. But all the defendants have denied copying. 

During the trial of the cause, the Court read the book, the scenarios in their various forms, including the final form, and what is known as the "cutting continuity", which is a description of the action as it evolves on the screen. I also saw the motion picture at a private viewing. 

We are to determine whether infringement of copyright has been shown. 

Counsel for the plaintiff seem to think that because the plaintiff is a successful writer and has had friendly business relations with the motion picture company, and Taylor admits reading the book upon its publication, while denying copying any portion of it, the case is unusual. 

Granted that all these facts do not, ordinarily, co-exist in an action of this character, they do not call for different treatment from any other action of this type. Ultimately, the governing principles are the same whether, as here, we deal with an author of prominence or, as was the case in Echevarria v. Warner Brothers Pictures, Inc., D.C.Cal.1935, 12 F.Supp. 632, with one who is, practically, unknown. 

The issues in both cases are access and copying. Counsel for the plaintiff seem to lay too much stress on access. It is true that where access is admitted, "the probability that the similarities are the result of copying, intentional or unintentional" is high. See Shipman v. R. K. O. Radio Pictures, Inc., 2 Cir., 1938, 100 F.2d 533, 537. This, because access being admitted, there may be, despite the best of intentions, unconscious and unintentional copying amounting to infringement. See Harold Lloyd Corp. v. Witwer, 9 Cir., 1933, 65 F.2d 1, 16. But access alone "means nothing". Dellar v. Sam Goldwyn Inc., 2 Cir., 1939, 104 F.2d 661, 662; and see, Amdur, Copyright Law and Practice, 1936, pp. 670-672. There must still be similarity. And the following questions must still be answered: 

"Are there similarities of matters which justify the infringement claimed? 

"Was there a piracy of a copyrightable play as shown by similarities of locale, characters, and incidents?" Shipman v. R. K. O. Radio Pictures, Inc., 2 Cir., 100 F.2d 533, 537. 

The rules by which it is determined, once access is shown, whether similarity exists which amounts to infringement are always the same. We still must find similarity of distinctive locale, character and incidents. 

In assaying the two works to determine the existence of similarities, we are warned constantly by courts to avoid the analyses of experts who, by reducing incidents to abstractions, can find the similar in the wholly dissimilar. Judge Learned Hand in Nichols v. Universal Pictures Corp., 2 Cir., 1930, 45 F.2d 119, 122, 123, states: "This is not the proper approach to a solution; it must be more ingenuous, more like that of a spectator, who would rely upon the complex of his impressions of each character." This is the test which makes similarity dependent not upon the minute, scalpel-like dissection of an expert, who transmutes each incident into an abstraction or sublimation in order to find identity, but upon the impression of sameness which the two works carry to the ordinary reader and observer. And it is the test which the Ninth Circuit Court of Appeals adopted in Harold Lloyd Corporation v. Witwer, 9 Cir., 1933, 65 F.2d 1, 18 et seq., and which it followed later in Kustoff v. Chaplin, 9 Cir., 1941, 120 F.2d 551, 561. 

The reason for this is obvious. One does not infringe the secret, undisclosed thoughts of an author. One infringes the literary product in which his original thoughts have found expression. And, just as in the case of musical composition, similarity in accent, harmony or melody means "resemblance noticeable to the average hearer" (Hirsch v. Paramount Pictures Corp., D.C.Cal.1937, 17 F.Supp. 816, 818; and see, Carew v. R. K. O. Radio Pictures, Inc., D.C.Cal.1942, 43 F.Supp. 199, 200 et seq.; Darrell v. Joe Morris Music Co., 2 Cir., 1940, 113 F.2d 80), so in the case of a motion picture, there is no infringement "unless an ordinary observer is led to believe that the film is a picturization of the story." Kustoff v. Chaplin, 9 Cir., 1941, 120 F.2d 551, 561. 

With these principles in mind, the problems involved here can be solved easily.
As to access, the testimony of Taylor shows that he read "Serenade" when it was published some two years before he began work on the scenario of the picture. But he denies copying. He denies that, at the time he evolved the church sequence at the request of the director, he had any recollection of the church scene in "Serenade". He states that the sequence of incidents came to him from his own recollection of regular church attendance and service as an altar boy in a Catholic church in his youth. The producer of the picture, John M. Stahl, testified, without contradiction, that the church scenes were suggested by him to another writer, George O'Neil, who worked on the script before Taylor and that Taylor began work with O'Neil's material. Taylor had nothing to do with the direction of the motion picture. 

These facts are important because plagiarism, if it exists at all, must be found in the finished motion picture. The Taylor scenario has not been published. It has never left the files of the film company. It has been transmuted into the motion picture. And unless Taylor's borrowing, assuming that there was such, was carried over into the picture by the director, so as to convey to the person who, having read the book, sees the motion picture, the idea of identity, we have neither access nor copying. Stahl, the director, a man of long experience, denies that he had ever read "Serenade" or that he had read the two synopses found in the files of the story department of the film company and dated December 10, 1937, and January 7, 1938. He also denies that when the church scene was discussed with Taylor, Taylor suggested that such a scene had been used recently by Cain in a book. Stahl, who was solely responsible for the motion picture, told a very direct, forthright, and convincing story of the evolution of the picture, of the difficulties encountered in its production and how they were solved by introducing the church scene which had been used successfully in a recent picture produced by another company and which he, himself, had used in other productions. So, if we disregard Taylor's random remark, to which the plaintiff has attached implications of deliberate theft, and which Taylor, himself, repudiates, there is no proof of access. 

But admit that there was access. As I stated at the trial, in the face of the denial by Taylor, Stahl, his secretary, Miss Boone, of any deliberate copying, a finding of conscious copying would find no support whatever in the evidence. Was there what the cases call "unconscious and unintentional copying?" See Harold Lloyd Corporation v. Witwer, 9 Cir., 1933, 65 F.2d 1, 16. If we apply the only permissible test — similarity — as it is manifest to the ordinary reader of the book and observer of the picture, the sole and obvious answer must be negative. 

One need not deny originality to "Serenade". There can be no claim of similarity of subject or of characterization between the book as a whole and the motion picture. In the book, we have a musician, who, seeking escape from a failure of his voice, caused by an homosexual attachment, finds his voice again in the elemental passion for a primitive Mexican girl of Indian extraction, only to find his newly-won fame destroyed by a murder committed by the girl which leads to her own murder in her native land. In the motion picture, we have a famous musician, wedded to a wife who is mentally ill, who falls in love with a waitress and finds, not momentary happiness in the fulfillment of that love, but a greater happiness in its renunciation by both. Plaintiff, himself, concedes as much when he limits the alleged infringement to the church sequence. But, here again, there is no similarity. To go into detailed comparison of the two sequences would require epitomizing for this opinion the barbaric, elemental scenes, shocking to any person with religious sensibility, before the altar of the little church in Acapulco, Mexico. I shall not do so. It suffices to say that it is inconceivable that the ordinary theater-goer, who saw the chaste, idyllic church sequence in "When Tomorrow Comes", of the two lovers who spent the night in the church choir loft, where they sought asylum from the storm, would see in it, in the manner of its development or in the means used to portray the period between their entry into the church to their rescue, any similarity between it and the sensuous scene which Cain portrays in "Serenade". I can see none. 

In fact, I cannot understand "how any one could persuade himself that the one was borrowed from the other". Lacombe, J. in Hubges v. Belasco, C.C.N.Y.1904, 130 F. 388; and see Stevenson v. Harris, D.C. N.Y.1917, 238 F. 432; Dymow v. Bolton, 2 Cir., 1926, 11 F.2d 690. 

It is not claimed that the choice of the church as a refuge in storm lends itself to the assertion of copyrightable originality. Houses of worship have been asylums since their very beginning. At one time, the legal privilege of sanctuary attached to churches. And he who entered one of them acquired immunity against the law. 

The other small details, on which stress is laid, such as the playing of the piano, the prayer, the hunger motive, as it called, are inherent in the situation itself. They are what the French call "scènes à faire". Once having placed two persons in a church during a big storm, it was inevitable that incidents like these and others which are, necessarily, associated with such a situation should force themselves upon the writer in developing the theme. Courts have held repeatedly that such similarities and incidental details necessary to the environment or setting of an action are not the material of which copyrightable originality consists. See Bachman v. Belasco, D.C.N.Y.1913, 224 F. 815; Underhill v. Belasco, D.C.N.Y.1918, 254 F. 838; Bein v. Warner Bros. Pictures, Inc., 2 Cir., 1939, 105 F.2d 969, 971; London v. Biograph Co., 2 Cir., 1916, 231 F. 696; Seltzer v. Sunbrock, D.C.Cal.1938, 22 F.Supp. 621, 628; De Montijo v. 20th Century Fox Film Corp., D.C.Cal.1941, 40 F.Supp. 133. 

So I need not draw any parallellisms between the scene in the plaintiff's book and similar scenes in similar locale, which may occur to me as a student of literature. Conceding to the plaintiff originality in the matter of treatment of the church sequence in "Serenade", I find such dissimilarity in the effect, purpose and impression upon the observer in the church sequence in "When Tomorrow Comes," that it did not and could not have its genesis in it. 

. . .

Judgment will, therefore, be for the defendants that plaintiff take nothing by his Complaint against the defendants or any of them. 

. . .

 Irene Dunne and Charles Boyer in When Tomorrow Comes (1939)

Questions:

1. In Cain, the court held that the film When Tomorrow Comes (1939) did not infringe on the novel Serenade (1937), even if elements of the film were copied from the novel, because the allegedly copied elements could not be protected by copyright under the scènes à faire doctrine. Do you agree?
2. The film borrows several scènes à faire from the novel. Should copyright protect the selection, organization, or arrangement of scènes à faire?