Merger and Scenes à Faire Doctrines Yield "Thin" Copyrights

In decisions issued six days apart, two panels of the U.S. Court of Appeals for the Ninth Circuit addressed the scope of copyright protection in instances where ideas and standard elements predominate over individual expression. In both cases, the Ninth Circuit found the works to be only entitled to "thin" protection, and only infringed where the accused work is a virtually identical copy.

The first case, Ets-Hokin v. Skyy Spirits Inc., Case Nos. 01-17411, 02-15126, 2003 U.S. App. LEXIS 4510 (9^th Cir. Mar. 14, 2003), involved commercial advertising photographs of a blue Skyy vodka bottle. The plaintiff-photographer, Ets-Hokin, had claimed Skyy had violated his copyright in a series of photographs he had taken for a Skyy advertising campaign by later using similar photographs shot by another photographer.

In an earlier decision in this same case, the Ninth Circuit held that Ets-Hokin met the minimal threshold of originality required for copyright protection. On remand, however, the district court entered summary judgment of "no infringement" in favor of Skyy. In affirming entry of summary judgment, the Ninth Circuit applied the doctrines of merger and scenes à faire. Quoting from its earlier decision in this case, the Ninth Circuit observed that "[u]nder the merger doctrine, courts will not protect a copyrighted work from infringement if the idea underlying the work can be expressed only in one way, lest there be a monopoly on the underlying idea. In such an instance, it is said that the work’s idea and expression ‘merge.’ Under the related doctrine of scenes à faire, courts will not protect a copyrighted work from infringement if the expression embodied in the work necessarily flows from a commonplace idea… ."

Applying these principles to the current dispute, the Ninth Circuit concluded that "[t]hough the Ets-Hokin and Skyy photographs are indeed similar, their similarity is inevitable, given the shared concept, or idea, of photographing the Skyy bottle. When we apply the limiting doctrines, subtracting the unoriginal elements, Ets-Hokin is left with only a ‘thin’ copyright, which protects against only virtually identical copying." Skyy’s photographs were not infringing since they were not identical to those of Ets-Hokin, but differed in lighting, angles, shadows, reflections and background. Indeed, the only constant was the bottle itself.

In the second case, Satava v. Lowry, Case No. 02-16347, 2003 U.S. App. LEXIS 5380 (9th Cir. Mar. 20, 2003), the Ninth Circuit vacated an injunction preventing a sculptor from selling allegedly infringing glass-in-glass sculptures of jellyfish. The copyrighted sculptures were described as "a vertically oriented, colorful, fanciful jellyfish with tendril-like tentacles, and a rounded bell encased in an outer layer of rounded clear glass that is bulbous at the top and tapering toward the bottom to form roughly a bullet shape, with the jellyfish portion of the sculpture filling almost the entire volume of the outer, clear glass shroud." The alleged infringer’s sculptures were virtually identical and, in fact, he admitted that he reviewed photographs and examined a specimen of the copyrighted sculptures.

Applying the scenes à faire doctrine, and citing to the previous week’s decision in Ets-Hokin, the Court found that "no copyright protection may be afforded to the idea of producing a glass-in-glass jellyfish sculpture or to elements of expression that naturally follow from the idea of such a sculpture." Moreover, the Court concluded that those aspects of the sculptures resulting from jellyfish physiology, as well as those resulting from the glass-in-glass methods employed by Satava, were commonly used, part of the public domain and unprotectable. "[A] combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship." The Satava sculpture did not meet this standard and "lack[ed] the quantum of originality needed to merit copyright protection."

To the extent that Satava made copyrightable contributions, such as varying the pose, background or other features, he could protect others from copying the original features he contributed. Otherwise, as with Ets-Hokin, what Satava possessed was simply "a thin copyright that protects against only virtually identical copying."