The Merger Doctrine Says “Stay In Your Lane”

Mar 28

As we discussed in a previous article on the Daniher v. Pixar Animation Studios lawsuit, the U.S. Copyright Act extends federal copyright protection to original, creative works that are “fixed” in a “tangible medium of expression,” and expressly declines to extend such protection to ideas—regardless of the form in which the idea is embodied. 17 U.S.C. § 102. In essence, this means that copyright protection extends to the way an idea is expressed in a perceivable form (e.g., on paper, screen, or recording), but copyright protection does not extend to the idea itself. This policy helps support and maintain the integrity of the Constitution’s Copyright Clause, which recognizes the importance of promoting the progress of the arts, fostering competition, and supporting access to information (U.S. Const. art. I, § 8, cl. 8). This so-called “idea / expression dichotomy” is not always easy to ascertain, however, for sometimes creative, original expressions, even when fixed in a tangible medium, are unprotectable. Although the Copyright Act’s “originality” threshold generally only requires independent creation plus at least some minimal degree of creativity, there are sometimes only a limited number of ways a single idea can be expressed.

“The unlucky copyright-owning plaintiff can therefore have its copyright invalidated by a savvy defendant who may have unknowingly copied the way the plaintiff’s idea was expressed in the copyrighted work. The Merger Doctrine can thus be used as a sword, and not only as a shield—so copyright holders beware. It’s always best to consult an experienced copyright attorney before taking the plunge and suing an infringer who could eventually seek to invalidate your copyright.”

This is where the “Merger Doctrine” comes in. Some ideas can be expressed intelligibly only in one or a limited number of ways (e.g., mathematical expressions, rules of a game, depictions of nature, scientific theories, or factual information). In such cases, any original elements of a created work would “merge” with the idea being expressed—meaning the resulting expression would not be protectable under copyright law. The Merger Doctrine thus promotes competition and freedom of expression, and it is often invoked when it would be unreasonable to force would-be defendants to express themselves another way.

Thus, the Merger Doctrine is often used to defend against copyright infringement claims. In these situations, the defendant must prove to the court that the copyright allegedly being infringed can only be expressed in a limited number of ways, therefore, the Merger Doctrine should strip any federal protection that copyright currently enjoys. After all, courts cannot enforce a copyright infringement claim when the work allegedly being infringed upon is itself invalid.

In the often-cited case Mason v. Montgomery Data, Inc., the Fifth Circuit Court of Appeals found that the Merger Doctrine did not apply to certain real estate maps because the author’s ideas embodied in the maps were able to be expressed in a variety of ways. Mason v. Montgomery Data, Inc., 967 F.2d 135, 141 (5th Cir. 1992). In coming to its conclusion, the court stressed that the initial focus must be on “identify[ing] the idea that the work expresses, and then attempt[ing] to distinguish that idea from the author's expression of it.” Id. at 138-139. If the court can distinguish the idea from its expression, then the expression will be protected because the fact that one author has copyrighted one expression of that idea will not prevent other authors from creating and copyrighting their own expressions of the same idea.” Id. at 139. In all cases, the difference between an unprotected idea and protected expression is one of degree; the guiding consideration in drawing this line is the preservation of the balance between competition and protection. 17 U.S.C. § 102(b).

The unlucky copyright-owning plaintiff can therefore have its copyright invalidated by a savvy defendant who may have unknowingly copied the way the plaintiff’s idea was expressed in the copyrighted work. The Merger Doctrine can thus be used as a sword, and not only as a shield—so copyright holders beware. It’s always best to consult an experienced copyright attorney before taking the plunge and suing an infringer who could eventually seek to invalidate your copyright. The so-called “infringer” may simply be another creative like yourself trying to express an idea in his or her own unique (albeit limited) way.

As the 8th Circuit Court of Appeals aptly put it: denying copyright protection to an expression that is merged with its underlying idea “prevent[s] an author from monopolizing an idea merely by copyrighting a few expressions of it.” Toro Co. v. R & R Products Co., 787 F.2d 1208, 1212 (8th Cir.1986). So stay in your lane—we don’t want any merging.