Section 102(b) and negative categories of copyright subject matter

Section 102 of the Copyright Act has been receiving quite some attention in legal commentary recently. Professor Pamela Samuelson authored an article challenging the influential Nimmer treatise’s interpretation of subsection 102(b) and Nimmer’s restrictive reading of Baker v. Selden. (William Patry has commented in his blog on Samuelson’s article.) In a recent paper, Professor Dan Burk is discussing the application of section 102(b) to copyrightability of methods.

The noncopyrightable elements listed in section 102(b) are “any idea, procedure, process, system, method of operation, concept, principle, or discovery.” I prefer to call them “negative categories” because they describe types (or categories) of information that are not subject matter of copyright protection, as opposed to stating types of information that are protected under the statute (“positive categories” - if you may, such as “original works of authorship” or the list of specific classes in section 102(a)(1)-(8)). Negative and positive categories work together to concretize copyright subject matter and mark its outer boundaries.

One of the most central (and contentious) issues is whether section 102(b) should function to deny copyrightability of highly-functional expressions at the outset. The alternative would be to apply negative categories only at the stage of the infringement test, focusing on whether the alleged violator could represent the idea without copying the expression in a feasible or practical way. This is an elementary choice, which spills over to the application of related doctrines which are said to underpin the statutory language in section 102(b), most importantly the idea/expression dichotomy (or “distinction” - as Professor Samuelson would have it), and its happy cousins, the merger doctrine, the scène à faire (“obligatory scenes”), or the lock-out code doctrine.

The pragmatist would ask “then, who cares?” In practice, so the challenge goes, an expression that is "too" functional would be denied protection also by a court following the latter approach. That is so since plaintiff should fail to show that defendant has copied any protected elements of the expression that did not merge with the nonprotected elements.

This attitude oversimplifies matters. The choice at which stage to apply negative categories is decisive for many important questions, both at the procedural and the material levels. For example, if negative categories determine copyrightability at the outset, a simple and highly-functional computer code that is found by the court noncopyrightable due to its mere functionality would also not be covered by section 1201 anticircumvention protections. (The Sixth Circuit’s 2004 decision in Lexmark v. Static Control, which applied negative categories to the question of copyrightability, is in my opinion one of the most important copyright decisions of recent yeas.)

Another important upshot of such a choice, one that did not receive much attention in the literature, is that copyrightability issues are largely a matter of domestic law. Those who fear the international enclosure effect of the increasingly globalizing copyright regime (Berne, TRIPS, WIPO) would prefer to preserve domestic discretion on how to apply negative categories. For instance, they would rather retain domestic prerogatives on deciding if, and under which circumstances and conditions, a functional code is copyright protected. Being shackled in this context to international standards, for example the exceptions framework stipulated by the three-step test, is an unpleasant feeling. In fact, shifting hybrid issues from the realm of exceptions to the realm of copyrightability analysis is an elegant way to avoid this unfortunate test. I have elaborate a little more on this here.

This brings me be to the last point. Every type or element of information needs an expression to render it communicable. For all copyright (and other practical) matters, the idea comes built into an expression. If the law sought to protect only the “original” elements, it would need to determine in borderline cases whether exclusivity in the expression is tantamount to exclusivity in negative categories such as ideas, facts, discoveries or methods. And it would have to clarify it immediately.

Of course, copyright law also tolerates later day considerations, but this is usually performed via a different technique called exceptions or limitations. What is then the difference between the Copyright Act and a law that would grant exclusivity in the expression without typological distinctions, but would stipulate a statutory exception saying that when the idea and the expression merge, copying of the expression shall be excused? I think that the answer is hiding in a very visible place. Section 102 is captioned: “Subject matter of copyright: In general.” This seems to be the natural locus of negative categories. It is also where they need to play their crucial role in the copyright system.

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