Doctrine of Merger or “scenes a faire” doctrine under Copyright

Doctrine of Merger or “scenes a faire” doctrine under Copyright Law

It is the cardinal principle of copyright law that the idea is not copyrightable but the expression of an idea is copyrightable. To explain it by an illustration, let’s say “Sun and Moon”, now this is a simple idea or plot and let’s say the comparison between the sun and moon can be expressed in thousands of ways by different poets and each particular expression by way of poem is copyrightable. So, the idea “sun and moon” is not copyrightable but the expressions of the idea are copyrightable. The logic is very simple to understand. The basic purpose of copyright law around the world is foster creativity and not to give monopoly. So, if the idea itself becomes copyrightable, it would hamper the growth of creativity which is against the very idea of the copyright law.

Now, there may be situations when the idea may be manifested in very few expressions or limited expressions. In this situation, the principle of copyright law that expression is copyrightable and ideas are not copyrightable becomes difficult to apply. In such a situation, the courts consider the idea/expression dichotomy to help focus on whether the idea is capable of various modes of expression, or whether protection of the expression would ipso facto protect the idea, which is not permissible under the copyright law. The idea/expression dichotomy is a necessary part of copyright law because clinging to the rule that ideas are not copyrightable becomes difficult when the idea and the form of the expression necessarily coincide. Simply stated, the doctrine of merger means that when there is only one way to express an underlying idea, the courts apply the Doctrine of Merger. According to this doctrine, the idea will merge with the expression as to make them indistinguishable. The result is a non-copyrightable expression. Courts have reached this result by reasoning that copying the expression in such circumstances would confer a monopoly of the idea on the copyright owner free of the conditions and limitations imposed by the law.

The seminal case addressing this distinction between the treatment of an idea verses the expression of an idea and how these may merge is US Supreme Court judgment in Baker v Selden , 101 U.S. 99 (1880). In that case the plaintiff sought to have accounting forms he created covered by the copyright protection he obtained for a book he wrote in which he explained a method of book-keeping that he had developed. The Supreme Court concluded that the protection the plaintiff was afforded for his book, which described the accounting system idea, would not cover the forms, which proved to be the tangible manifestation of his idea. The Court’s rationale has come to be known as the merger doctrine.

The aforesaid Doctrine of Merger was applied by the Delhi High Court in the case of MATTEL, INC. and ORS. Vs. Jayant Agarwalla and others pronounced on 17/09/2008. In this case the Hon’ble High Court explained the doctrine of merger in following words:

“In the realm of copyright law the doctrine of merger postulates that were the idea and expression are inextricably connected, it would not possible to distinguish between two. In other words, the expression should be such that it is the idea, and vice-versa, resulting in an inseparable merger of the two. Applying this doctrine courts have refused to protect (through copyright) the expression of an idea, which can be expressed only in a very limited manner, because doing so would confer monopoly on the ides itself “.

Doctrine of Merger and Software Copyright:

Doctrine of merger is applicable in the software copyright too. For example, when a work’s “expression is essential to the statement of the idea” embodied therein, the author’s expression of that idea is said to “merge” with the idea itself, and is rendered uncopyrightable. This is so even if the idea, process, or other type of non-copyrightable element expressed is “novel” in the sense that it has never before been expressed and is unique. The idea/expression distinction is used to determine which aspects of computer programs are copyrightable and which are not. The merger doctrine was used to address the question of substantial similarity “in the context of computer program structure” and the doctrine was used as an effective way to eliminate non-protectable expression contained in computer programs. The literal copying of source code/object code is infringement while the copying of non literal elements, like common steps in development software may be excusable applying the principle of doctrine of merger as laid down by the US Supreme Court in the seminal case of Baker v Selden , 101 U.S. 99 (1880). For example, you may have seen that graphical user interface (GUI) of many software are same because there are only limited ways to doing it and hence some judgments suggest that GUI is not copyrightable. However, some judgments suggest that even GUI may be copyright protectable for example peculiar “Look & Feel” of the GUI. It would be pertinent to mention here that Article 10 of the Trade Related Intellectual Property Rights Agreement (TRIPs) expressly provides that computer programs, whether in source code or object code shall be protected as literary works under the Berne Convention, 1971. India is a signatory to the Berne Convention and to give effect to the mandate of Berne convention and Article 10 of the TRIPS, it amended its Copyright Act, 1957 in 1995 bringing within its fold computer programme also as literary work to be protected by Copyright Act. The Section 2 (o) of the Copyright Act, 1957 defines “literary work” to include computer programme as well as computer database. The issue of software copyright with the application of doctrine of merger is not raised before the Indian Courts as it has been before US & UK Courts where litigation pertaining to software infringement is frequent, and therefore the law has started to develop and taking some direction there, but the conflicting issue of protectable elements of software and more so the applicability of the doctrine of merger has not yet come before the Indian Court and remains a grey area of law here and therefore, it would be interesting to see the approach of Indian Courts or Supreme Court of India  as to how it applies doctrine of merger in the software copyright