Re: Merger Doctrine Question -- Idea/Expression

On Fri, 13 Nov 1998, Laurie Urquiaga <urquiagal[_at_]lawgate.byu.edu> wrote:
>
> I don't know what this 'merger doctrine' is. Can somebody
> explain it in simple terms that will not overwhelm this lowly 1L? :-)

Extracted from HyperLaw/Bender v. West II (Text) You can read the whole opinion at http://www.hyperlaw.com/

HyperLaw argues that we should apply the merger doctrine to bar the copyrightability of West's alterations to judicial opinions.

     The fundamental copyright principle that only the expression
     of an idea and not the idea itself is protectable has produced
     a corollary maxim that even expression is not protected in those
     instances where there is only one or so few ways of expressing
     an idea that protection of the expression would effectively
     accord protection to the idea itself.

Kregos v. Associated Press, 937 F.2d 700, 705 (2d Cir. 1991) (citation omitted). HyperLaw claims that the idea of a case report has effectively merged with West's expression of that concept.

We decline to invoke the merger doctrine in this case. First, "[o]ur Circuit has considered this so-called `merger' doctrine in determining whether actionable infringement has occurred, rather than whether a copyright is valid." Id.; see also CCC Info. Servs., Inc. v. Maclean Hunter Market Reports, Inc., 44 F.3d 61, 72 n.26 (2d Cir. 1994) ("In this circuit, consideration of the merger doctrine takes place in light of the alleged copying to determine if infringement has occurred, rather than in analyzing the copyrightability of the original work."). In addition, under this approach, "if a defendant has actually copied the plaintiff's work, it is unlikely to be allowed to rely on merger to avoid liability," Kregos, 937 F.2d at 716 (Sweet, J., concurring in part and dissenting in part). HyperLaw seeks a declaratory judgment holding West's case reports non-copyrightable and allowing it actually to copy West's case reports. It therefore cannot avail itself of the merger doctrine.

Second, West's work does not constitute a "building block[] of understanding," which we have indicated is the type of expression to which we will consider applying the merger doctrine. See CCC Info. Servs., 44 F.3d at 71.

Carl Hartmann
<hartmann[_at_]federal-litigation.com> Received on Sat Nov 14 1998 - 21:46:18 GMT