Wednesday, August 01, 2007

Pam Samuleson and Section 102(b)

Yesterday I did a post on Professor Pam Samuleson's call for the initiation of discussions on a thorough revision of the Copyright Act. She has also written a very serious, very well-research 57 page piece on Section 102(b), entitled "Why Copyright Law Excludes Systems and Processes from the Scope of Its protection." The article is available here on ssrn and will be published in the University of Texas Law Review, 85 Tex. L. Rev. 1921 (2007). This is a must read.

Professor Samuelson has done outstanding historical, case law, and legislative history research, as well as providing very close readings of foundational Supreme Court opinions such as Baker v. Selden and Mazer v. Stein. She then ties her reading of the issues to late 20th century software cases. Her biggest contribution though may be in her devastating critiques of the Nimmer treatise's "reading" of Baker and Mazer. Although far from the first to do so, hers is the most thorough. Her work is one more welcome addition to what could be a lifetime of purging fallacious readings found in that treatise.

Baker is important for many reasons although as she notes few of them can be traced to the opinion itself. The origin of the idea-expression dichotomy is frequently traced to Baker, but it is questionable whether the origin is correctly ascribed; the opinion was decided on the ground of lack of originality. Plaintiff Selden had developed a system of double-entry bookkeeping, which he described through explanatory text and forms and published in a book for which he received a copyright registration. Defendant Baker wrote a book employing a similar system of bookkeeping, but he used substantially different forms. While certain columns were identical in both parties' works, the defendant claimed these columns did not originate with the plaintiff and were, moreover, required by state law. Even though there was no appropriation of either the explanatory text or the forms, Selden claimed that the copyright in his book gave him the exclusive right to use the double-entry system of bookkeeping, despite the lack of substantial similarity between the parties' forms. The Supreme Court rejected Selden's claim of ownership of rights in his system, writing, “the mere copyright of Selden's book did not confer upon him the exclusive right to make and use account-books, ruled and arranged as designated by him and described and illustrated in said book.”

The Court's reasoning is revealed in an earlier passage:

To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters-patent, not of copyright.[FN5]

In short, Selden was attempting to gain patent protection for his system through a copyright in a book, an effort the Court rightly rejected. Then, in dictum that has become (in)famous as the “use versus explanation” dichotomy, the Court added:

The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book. And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public; not given for the purpose of publication in other works explanatory of the art, but for the purpose of practical application.

This statement is dictum for two reasons. First, under the facts of Baker, the defendant Baker's work was not substantially similar to plaintiff Selden's; Baker could use the knowledge contained in Selden's book “without incurring the guilt of piracy” and did so without copying Selden's forms. In other words, Baker did practice the art contained in Selden's book without using Selden's “methods and diagrams.” The centerpiece of the suit was Selden's claim that he owned a copyright in the bookkeeping system notwithstanding the lack of substantial similarity in the forms—the illustrated methods and diagrams. If there had been substantial similarity between the parties' forms, the case would have been a run-of-the-mill infringement suit. The Supreme Court appears to have subsequently interpreted Baker v. Selden as standing for nothing more than a case where there was no substantial similarity and the claim was in the system notwithstanding the lack of similarity.

The second and perhaps more important reason the “use versus explanation” statement is dictum is that the Court decided the case on an entirely different ground. The holding as announced by the Court was “blank account-books are not the subject of copyright.”[FN8] The Court's conclusion was that Selden's forms lacked originality, not that they contained expression that was merged with his bookkeeping system, as the lower courts' computer program opinions mistakenly assert. Instead, there was no original expression to begin with. The holding announced by the Court—that there is no originality in blank forms—spawned a rich history of cases and Copyright Office regulations involving such forms, the upshot of which is the conclusion that the Baker v. Selden “blank form rule” is nothing more than an application of the originality requirement. Those forms that possess the requisite “modicum of creativity” have been protected.

Baker v. Selden, when understood according to its facts and the holding announced by the Court, stands for the unremarkable conclusion that Selden's forms lacked the requisite originality. Since the forms were unprotected and Selden had not received a patent, he had no right to control their use. Deification of Baker v. Selden in late 20th-century computer-program cases is entirely unjustified.

1 comment:

Dean Rowan said...

I don't think it's so simple. The Court seems to be struggling with contextual indicia best illustrated by the recitation of cases similar "if not precisely in point." The Court suggests that the outcome of the case involving furniture diagrams in a catalog might have turned out otherwise had the identical diagrams been used for some other more creative purpose. "[S]uch a work as this could not be pirated with impunity..."

Perhaps Prof. Sameulson's article--thank you for the reference--or, more likely, her contribution to Intellectual Property Stories, elaborates the historical background, but it appears from the opinion that Baker merely used Selden's "art" for his own bookkeeping work. Had he written his own explanation of a system of bookkeeping and copied Selden's forms, the Court seems to suggest there would have been an infringement. "The use by another of the same methods of statement, whether in words or illustrations, in a book published for teaching the art, would undoubtedly be an infringement of the copyright." Originality would not have been an issue.

It is conceivable that the determinative distinction the Court toys with is that between science and the useful arts versus ornamentation and "illustrations addressed to the taste." In this case, perhaps the forms could not be copyrighted, inasmuch as their purpose would remain ancillary to the described art for which they are to be used.

At a glance, I see that Prof. Samuelson's article makes much of the dearth of occurrences of the word "idea" in the opinion to support the thesis that the case does not stand for the idea/expression dichotomy." With all due respect, I think that ascribes a level of technical precision and semantic stability to judicial writing that does not exist. (Just look at how "use" is used in this opinion.) She does not refer to one sentence in the opinion that could stand for the distinction: "But there is a clear distinction between the book, as such, and the art which it is intended to illustrate." The book is the expression of the idea, which is the art. One could quibble as to whether or not "art" (as system) can be reduced to a more atomic sort of "idea," but the analogy is fair.