Post by John Golden
In the forthcoming article Reconceptualizing Copyright’s Merger Doctrine, Pamela Samuelson of Berkeley Law provides an extended review of copyright law’s merger doctrine. Courts have periodically invoked this doctrine in restricting the extent to which copyright protections apply to the expression of an idea when, as Samuelson puts it, “that idea is incapable of being expressed, as a practical matter, in more than one or a small number of ways.” Samuelson’s article seeks to quash a number of “myths” about the doctrine, touching on aspects of its substantive scope, the frequency of the doctrine’s applicability, and its history as a creature of “common law adjudication.” Samuelson concludes, among other things, that (1) the doctrine serves as an important “limiting principle of U.S. copyright law”; (2) the doctrine can affect copyrightability as well as copyright scope; and (3) courts should avoid an overly narrow view of the doctrine, thereby helping it realize its potential as a means for “mediating conflicts between and among the interests of first and second-generation authors, of third parties affected by those disputes, and of the public.”
This blog post focuses on another aspect of Samuelson’s article, its discussion of how the merger doctrine relates to other limiting doctrines in copyright. These other doctrines include the following: (1) the scènes à faire doctrine, which limits the extent to which copyright covers standard or indispensable elements of expression (such as conventional poses in portraits, see William W. Fisher III et al., Reflections on the Hope Poster Case, 25 Harv. J.L. & Tech. 243, 259 (2012)); (2) copyright law’s originality requirement; (3) exclusions of facts, ideas, and other functional subject matter from copyright protection. At one point, Samuelson suggests that courts’ relative lack of confidence in their mastery of copyright law’s content or justifications might explain some of the apparent proliferation of doctrinal overlaps. She writes, “Courts sometimes perceive the other doctrines as overlapping with merger, but in some cases, courts invoke multiple doctrines when seemingly unsure which doctrine would provide the soundest grounding for the court’s decision.”
As illustrated by Samuelson’s suggestion of a possible source of doctrinal overlaps, the existence of these overlaps or what I would term partial doctrinal “redundancy” raises questions about their provenance, the reasons for their persistence, and the wisdom of allowing them to persist. As Samuelson points out in a footnote, the degree of overlap observed in this sector of copyright law contrasts with what has until recently seemed a long-term project of patent law—namely, an increasing compartmentalization and separation of legal doctrines, perhaps especially those regulating patentability and patent scope. This limitation of redundancy has sometimes led to a greater sense of doctrinal clarity but has also led to problems often associated with excessive formalization—i.e., results in individual cases that seem unduly remote from what lawmakers intended from a policy standpoint and complaints about an excessive capacity for sharp players to work both around legal doctrines’ boundaries and through the gaps between them. In a draft article entitled “Scope,” Mark Lemley and Mark McKenna have noted analogous problems arising in intellectual property as a result of courts’ insistence on separation of questions of infringement, of the validity of alleged intellectual property rights, and of the applicability of various defenses.
What is the proper balance between redundancy and streamlining in the law? To what extent do existing balances between these two aims differ between different areas of law, and to what extent do such differences reflect sensible responses to functional or otherwise substantial social concerns? These are questions that reach far beyond copyright, patent law, and intellectual property generally. I cannot hope to answer them in this short post. On the other hand, I hope the intellectual property examples spark interest. If you have the answers, please share!