[*PG705]THE COPYRIGHTABILITY OF LEGAL COMPLAINTS
Abstract: In 2002, a renowned U.S. class action law firm began placing copyright notices on its legal complaints. Cease-and-desist letters have been filed against several firms that lifted language off of the copyrighted complaints. Although no litigation has ensued to determine whether legal complaints are copyrightable, this Note asserts that legal complaints are copyrightable subject matter under the Copyright Act of 1976 despite the limitations of the idea-expression dichotomy, merger doctrine, useful article doctrine, and fair use defense. This Note focuses on the originality requirement of the Copyright Act, as interpreted through U.S. case law, and contends that legal complaints exhibit sufficient originality to warrant copyright protection.
There appear to be no valid grounds why legal forms such as contracts, insurance policies, pleadings and other legal documents should not be protected under the law of copyright.1
The copyrightability of legal complaints is a new and intriguing issue affecting American copyright jurisprudence.2 In 2002, the renowned class action law firm of Milberg Weiss Bershad Hynes & Lerach LLP placed copyright notices on its complaints and registered those complaints with the U.S. Copyright Office.3 The firm is attempting to prevent other law firms from lifting language off of its complaints, and the firm’s counsel has already issued cease-and-desist letters to ten firms who have plagiarized Milberg Weiss’s complaints.4 This Note analyzes the copyrightability of a legal complaint and concludes that Milberg Weiss would prevail in enforcing its copyright of its legal complaints.5
[*PG706] The situation, on its face, is not complicated.6 A law firm, Firm X, spends countless hours researching and compiling facts for a nation-wide class action lawsuit.7 Firm X drafts a complaint, which includes a copyright notice, but along comes a competing firm, Firm Y, that files an identical complaint against the same defendant.8 Rather than repeat the strenuous work of Firm X, however, Firm Y simply usurps Firm X’s complaint by copying and filing the exact same complaint.9 Firm X, upon learning of Firm Y’s copying, files cease-and-desist letters, and eventually files a copyright infringement lawsuit against Firm Y.10
Article I of the U.S. Constitution provides copyright protection to authors and inventors by giving them “the exclusive [r]ight to their respective [w]ritings and [d]iscoveries” in order “[t]o promote the [p]rogress of [s]cience and useful [a]rts.”11 With this power, Congress adopted the Copyright Act of 1976, which protects “original works of authorship,” including literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works.12
[*PG707] Litigation between Milberg Weiss, Firm X in the hypothetical, and alleged infringing firms, like Firm Y, has yet to materialize.13 The difficulty courts will have in evaluating this type of copyright infringement claim, however, is apparent due to the requirements of the Copyright Act of 1976.14 This Note predicts the outcome of a potential copyright infringement suit by Firm X against an allegedly infringing law firm, Firm Y, by examining case law in U.S. copyright jurisprudence.15 Section I.A of this Note briefly introduces the overall structure of copyright law, including the requirements for copyrightability, as well as the rights that a copyright owner possesses against infringers.16 Next, section I.B focuses on copyrightable subject matter, which is the first hurdle that Firm X must overcome to enforce its copyright against Firm Y.17 This section details the originality requirement of copyright law through seminal judicial decisions.18
Section I.C sets forth the various limitations on copyrightability, which are applicable even if complaints are copyrightable, including the idea-expression dichotomy, merger doctrine, useful article doctrine, and fair use defense.19 Thus, section I.C sets forth the potential defenses Firm Y would have against Firm X’s copyright infringement suit.20 Finally, Part II applies each of the various subject matter-related copyright doctrines to the copyrightability of complaints and concludes that Firm X’s complaint is copyrightable subject matter, and Firm X likely would prevail in a copyright infringement suit against Firm Y.21
Under the Copyright Act of 1976, a protectable work must be of copyrightable subject matter.22 That is, a copyrightable work must exhibit originality and be fixed in a “tangible medium of expression.”23 In [*PG708]addition, the Act sets out various notice and registration options for copyright owners.24 Finally, a copyright lasts for the life of the author plus 70 years or, in the case of entity authors, 95 years from first publication or 120 years from the year of creation, whichever occurs first.25
To establish copyright infringement successfully, a copyright owner must prove that there is valid ownership of a copyright and that the defendant copied and improperly appropriated the copyright owner’s work.26 A defendant may also infringe a plaintiff’s copyright by other means, such as creating a derivative work without prior permission.27 In addition, a copyright owner also has reproduction, distribution, performance, and display rights on the original work so that a [*PG709]defendant is liable for infringement for reproducing, distributing, performing, or displaying a work without authorization from the owner.28
The following Section clarifies one of the principle requirements of copyrightability—the originality requirement—as developed through case law.29 Subsequent sections address the limitations to copyright, such as the idea-expression dichotomy, merger doctrine, useful article doctrine, and fair use defense.30
Section 102 of the Copyright Act states that “protection subsists . . . in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated . . . .”31 Accordingly, in the hypothetical example of Firm X’s copyrighted complaint, Firm X first will need to persuade a court that its complaint is within the realm of copyrightable subject matter because it is “original.”32 This requirement does not demand novelty, as is required in patent law, ingenuity, or aesthetic merit.33 In fact, all that is required of this low originality standard is a showing that an author independently created a work that features a modicum of creativity.34 Thus, Firm Y may copyright a complaint even if it is identical to a prior, copyrighted work, such as Firm X’s complaint, so long as Firm Y shows that it independently created the work and that it features sufficient creativity.35 The meaning of independent creation and originality is described in the following subsections.36
In 1884, in Burrow-Giles Lithographic Co. v. Sarony, the U.S. Supreme Court addressed the originality standard as applied to a photograph of Oscar Wilde and concluded that the photograph was sufficiently original to warrant copyright protection.37 In Burrow-Giles, the plaintiff produced a photograph of Oscar Wilde in which the plaintiff posed and arranged the subject, selected his costume, and adjusted the lighting.38 Subsequently, the defendant made and sold copies of the photograph, but argued that he could not have infringed on any copyright because photographs were not “writings” as is required by the Constitution.39 The Court, however, interpreted the Constitution’s language to encompass “all forms of writing, printing, engraving, etching, &c., by which the ideas in the mind of the author are given visible expression.”40 In essence, the Court defined “author” to mean “he to whom anything owes its origin; originator; maker,” so that copyright focuses on the originality of expression—not the mode of expression, such as a photograph.41
In Burrow-Giles, the Court recognized that photographs are not copyrightable per se, but held that the plaintiff’s photograph was protected because it exhibited the requisite originality.42 The Court examined the plaintiff’s creative efforts in making the photograph, which included posing the subject in a particular way, choosing an appropriate costume and accessories, and applying different light and shade.43 Accordingly, the Court held that the photograph was an original work of authorship because it arose from the plaintiff’s own original mental conception and displayed the requisite modicum of creativity.44
Moreover, in 1903, in Bleistein v. Donaldson Lithographing Co., the U.S. Supreme Court again addressed the originality requirement in [*PG711]copyright law and held that originality does not depend on a work’s aesthetic merit.45 In Bleistein, the plaintiff’s employees created three chromolithographs—pictures printed in colors from a series of lithographic stones or plates—depicting various circus scenes.46 The defendant was accused of copying the three chromolithographs in violation of the plaintiff’s copyright.47 The posters were designed for sale to a circus owner to use in advertising his circus.48 The posters depicted different circus scenes—one of an ordinary ballet, another of bicycle performers, and one of men and women costumed to represent statues.49 As additional proof that the posters were original and were not made for anyone else, each poster also included pictures of the circus owner.50
The Court referenced its holding in Burrow-Giles in stating that lithographs were not automatically barred from copyright protection due to their mechanical nature.51 The Court also rejected the notion that originality should be decided by judging the aesthetic merits of a work.52 Instead, the Court, in holding that the lithographs were original, relied on a personality theory of copyright, which states that a work is original because it encompasses the unique personality of its artist.53 The lithographs in Bleistein, like the photograph of Oscar Wilde in Burrow-Giles, were sufficiently original because they contained the artists’ personal imprint of creativity and uniqueness.54 Specifically, the posters were original designs that arose from the artists’ ideal of how to appeal to an audience’s imagination.55 Like in Burrow-Giles, the artists’ creative judgments about the arrangement and selection of pictures were their original creation.56
In addition to the artistic works of photographs and posters in Burrow-Giles and Bleistein, respectively, the originality requirement also applies to literary works, such as telephone directories and news reports.57 In 1991, in Feist Publications, Inc. v. Rural Telephone Service, Co., the U.S. Supreme Court held that the names and telephone numbers used in the plaintiff’s telephone directory were not sufficiently original to warrant copyright protection.58 In Feist, the plaintiff, Rural Telephone Service Company, published a typical telephone directory that listed the names of its subscribers in alphabetical order along with each subscriber’s telephone number and town.59 The defendant, Feist Publications, Inc., also published telephone directories.60 Unlike the plaintiff’s directory, however, the defendant published area-wide directories that spanned larger geographical ranges.61
In Feist, the defendant wanted to compile a directory that covered eleven different telephone service areas.62 Accordingly, the defendant approached each of the eleven local telephone companies to obtain subscriber information.63 The plaintiff was the only service provider that refused to license its listings to the defendant.64 Nevertheless, the defendant used the plaintiff’s directory without consent, and the plaintiff sued for copyright infringement.65
In holding for the defendant, the Court reiterated the importance of two well-established propositions in copyright jurisprudence.66 First, facts are not copyrightable because they do not owe their origin to the author; second, compilations of facts generally are copyrightable.67 In addition, an important limitation on the copyrightability of compilations is that protection will extend only to the element of the compilation that is, in fact, copyrightable—the creative [*PG713]arrangement.68 In Feist, the plaintiff’s telephone directory was composed of uncopyrightable, factual information—names of subscribers and their corresponding towns and telephone numbers.69 The Court stated that “[t]he sine qua non of copyright is originality,” as mandated by the Copyright Act, because a work must be original to the author before it will qualify for protection.70 The level of creativity demanded by the originality requirement is extremely low, but here, the telephone directory was not even minimally creative.71 The names and telephone numbers of the subscribers were not created independently by the plaintiff, and therefore, could not be protected under copyright.72
The plaintiff, however, argued that its directory was still protected because it was a factual compilation.73 The Court recognized this exception, noting that a factual compilation may meet the minimum constitutional requirement for copyright protection if it features an original selection or arrangement—in essence, if it possesses a modicum of creativity.74 In Feist, however, the plaintiff did not select, coordinate, or arrange the factual information in an original way.75 In fact, the plaintiff’s selection and arrangement was typical of any telephone directory, and there was nothing remotely creative about organizing the directory alphabetically by surname.76
The Court reiterated that the primary objective of copyright law is “[t]o promote the Progress of Science and useful Arts”—not to reward the labor, or “sweat of the brow,” of authors.77 In conclusion, the Court held that the names, towns, and telephone numbers in the plaintiff’s telephone directory, as well as the organization of the information, lacked sufficient originality, and therefore, the defendant did not copy protectable subject matter.78
More recently, in 1998, in Nihon Keizai Shimbun, Inc. v. Comline Business Data, Inc., the Second Circuit Court of Appeals held that news reports were copyrightable because they contained sufficient originality.79 In Nihon Keizai, the plaintiff, a Japanese corporation that published financial and business news, accused the defendants of copyright infringement for translating portions of twenty-two of the plaintiff’s news articles to sell as abstracts to customers.80 The defendants’ abstracts displayed the same structure, organization, and grouping of facts as the plaintiff’s news reports.81 In addition, the defendants’ abstracts produced the same conclusions as the plaintiff’s reports, often using identical phrases and word choices.82 Basically, the defendants’ abstracts were nearly word-for-word translations of the plaintiff’s original reports, with only occasional rearrangements of facts or deviations from the plaintiff’s sentence structure.83
In addressing the main issue of whether the defendants’ work was substantially similar to the plaintiff’s work to constitute unlawful copying, the court first acknowledged that the defendants’ abstracts reported unprotected factual information.84 Nevertheless, the court held that the defendant violated the plaintiff’s copyright in its news reports, because copyright protects “the manner of expression, the author’s analysis or interpretation of events, the way he structures his material and marshals facts, his choice of words, and the emphasis he gives to particular developments.”85 Essentially, even though the news is not copyrightable in itself due to its highly factual substance, there may be a copyright in the reporter’s or publisher’s expression of the facts.86 The plaintiff’s arrangement of facts, word choice, sentence structure, and analysis were all part of the plaintiff’s protectable ex[*PG715]pression, and therefore, the defendants violated the plaintiff’s copyright in the reports by copying the original and protectable elements.87
Various doctrines emanate from the rules set out in the Copyright Act that limit the extent of copyright protection of a work, including the idea-expression dichotomy, merger doctrine, useful article doctrine, and fair use defense.88 The idea-expression dichotomy stands for the proposition that only expression—as opposed to ideas—is protectable under copyright law.89 The difficulty in applying this rule, as illustrated in the cases discussed below, is in distinguishing between ideas and expression.90 As a branch of the idea-expression dichotomy, the merger doctrine states that when there are only a limited number of ways to express an idea, the scarce expressions are “merged,” and are considered inseparable from the idea it[*PG716]self, thereby making the expression of the idea unprotectable under copyright law.91 Next, the useful article doctrine holds that a work is uncopyrightable if it is used for solely utilitarian purposes.92 The difficulty here, similar to the idea-expression dichotomy, is determining when a work is primarily functional instead of aesthetically motivated.93 Finally, the fair use defense utilizes a four-factor balancing test to determine when to allow unauthorized copying of a copyrighted work.94 The following subsections describe these various limitations and defenses and how they affect the copyrightability of subject matter ordinarily viewed as protectable under the Copyright Act.95
The Copyright Act expressly sets forth that copyright protection does not extend to “any idea, procedure, process, system, method of operation, concept, principle, or discovery.”96 This rule, the idea-expression dichotomy, means that ideas, as opposed to expression, are not copyrightable.97 In terms of the hypothetical example in the Introduction to this Note, Firm X is unable to copyright its complaint if it encompasses an idea rather than a form of expression.98 The difficulty in this inquiry, however, is in determining the line between idea and expression.99
In 1879, in Baker v. Selden, the U.S. Supreme Court set forth the critical idea-expression dichotomy by denying copyright protection to a system of bookkeeping.100 In Baker, the plaintiff, Charles Selden, ob[*PG717]tained a copyright for a book entitled “Selden’s Condensed Ledger, or Book-keeping Simplified” in which he explained a particular book-keeping system and illustrated his method with blank forms containing ruled lines, blank columns, and headings.101 The defendant, the alleged infringer, also wished to explain a bookkeeping system by using illustrative forms, but he used a different arrangement of columns and headings.102 The plaintiff filed suit against the defendant for allegedly infringing the plaintiff’s copyright by copying his bookkeeping forms.103
The U.S. Supreme Court held that the explanatory nature of the plaintiff’s book was copyrightable, because the author explained bookkeeping in his own, particular way.104 Nevertheless, the Court held for the defendant because he did not copy the plaintiff’s explanation of the bookkeeping system.105 Instead, the copyright infringement claim rested solely on the defendant’s copying of the blank forms used to illustrate the bookkeeping practice.106
The Court, in holding that there was no valid copyright on the forms in the book, emphasized the distinction between an author’s expression and the idea that is the subject of the author’s expression.107 The Court stated that the use of an art is “totally different . . . from a publication of the book explaining” the art.108 The plaintiff’s explanation of bookkeeping was protectable as expression, but the forms he used corresponded with the art of bookkeeping, which was [*PG718]not protectable under copyright.109 Implicitly, the forms lacked the requisite modicum of originality to support copyrightability, and therefore, the plaintiff did not have an exclusive right to make and to use the blank account forms in his book.110
Although courts often have found it difficult to distinguish ideas from expression, Judge Learned Hand, in his oft-cited 1930 opinion of the Second Circuit Court of Appeals in Nichols v. Universal Pictures Corp., offered a solution commonly referred to as the “abstractions test.”111 The defendant in Nichols was accused of copying the plaintiff’s play, “Abie’s Irish Rose.”112 The plots of both the plaintiff’s and defendant’s plays involved lovers, torn by their families’ animosities towards one another, who married, bore children, and helped reconcile their families’ differences.113
In deciding whether the defendant had copied the plaintiff’s play, Judge Hand noted that “[u]pon any work . . . a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out.”114 For instance, the most general statement of the play may have stated simply what the play was about.115 There is a point in this series of abstractions, however, where the pattern is no longer protected because doing so would protect general ideas instead of an author’s expression.116 In essence, the plays in Nichols were copyrightable, but the underlying theme common to both plays—lovers who reconcile their families’ differences––was too general to be copyrightable.117
The merger doctrine is an extension of the basic rationale of the idea-expression dichotomy, because it limits the copyrightability of expression when there is only one or a few, limited ways to express an idea.118 In such instances, the idea of the work and the expression behind the work merge together, that is, become inseparable, and as a merged component, become unprotectable under copyright law.119 With respect to the hypothetical example in this Note, Firm X would be unable to copyright its complaint if there were only a limited number of ways to express the complaint’s content.120 Copyright protection would be denied because it would essentially allow Firm X to constrain the public, that is, other law firms, from future use of the complaint’s substance.121 If there were numerous ways to express the complaint’s content, however, then Firm X could attain copyright protection in its complaint because, with other ways to express the content, Firm Y would not have to rely on Firm X’s expression.122 The following case illustrates the application of the merger doctrine.123
In 1967, in Morrissey v. Procter & Gamble Co., the First Circuit Court of Appeals held that the plaintiff’s “Rule 1” set forth in a sales contest was not copyrightable because there were only a limited number of ways to express the rule.124 The plaintiff was the copyright [*PG720]owner of a set of rules for a traditional sweepstakes-type contest.125 The plaintiff sued the defendant, who was also engaged in a similar-type contest, for copying nearly all of “Rule 1,” which included instructions for entering the contest.126 Although there was proof that there was more than one way of stating the rule, the court ruled in favor of the defendant because the subject matter was too narrow to qualify for copyright protection.127
Essentially, when there are only a limited number of ways to express a certain subject matter, copyrighting the “mere handful” of expressions could constrain the public by exhausting all possibilities for future use.128 “Rule 1” could only be expressed in a limited number of ways because it was so straightforward and simple.129 In such circumstances, the expression merges with the underlying idea, and copyright does not extend to the subject matter at all.130
In addition to the idea-expression dichotomy and merger doctrine, the useful article doctrine provides another limitation on copyright protection.131 The Copyright Act of 1976 extends protection to [*PG721]“pictorial, graphic, and sculptural works.”132 Protection for such works, however, is limited by the useful article doctrine, which prohibits protection of works that serve a utilitarian function.133 The Copyright Act defines a “useful article” as an “article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”134 In adopting the useful article doctrine, Congress’s intent was “to draw as clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design” to avoid monopolization of functional works.135 Relating back to the hypothetical introduced in this Note, Firm X’s complaint might not be copyright protected due to its utilitarian function in the judicial process.136 As discussed in the cases below, if one is unable to separate the artistic elements of Firm X’s complaint from its functional aspects, then the complaint itself is solely utilitarian and unprotectable under copyright law.137
Indeed, even before the Copyright Act of 1976 was passed, the U.S. Supreme Court recognized the uncopyrightability of useful articles.138 For instance, in 1879, in Baker,139 the U.S. Supreme Court set forth the idea-expression dichotomy, but the Court, in denying copyright protection for the plaintiff’s bookkeeping forms, also relied on the inherent usefulness of the forms.140 The plaintiff’s explanation of his bookkeeping system was protected, but the forms in his book were not, because they conveyed no information and were merely used to practice the art of bookkeeping.141 Although Baker is most often cited for the idea-expression dichotomy, its holding also serves to limit copyright by denying protection to utilitarian articles, such as blank forms.142
Moreover, the House Report for the 1976 Copyright Act cites Mazer v. Stein,143 among other cases, as holding that a useful article is something that has an intrinsic utilitarian function apart from conveying information or portraying an appearance.144 Basically, copyright [*PG722]protection does not stem from an article’s apparent artistic worth—instead, one must determine whether the article is intrinsically functional.145 Unfortunately, the House Report does not specify which uses are intrinsically functional.146 Accordingly, the judicial system has worked to define this standard over the years.147
In 1981, in Gay Toys, Inc. v. Buddy L Corp., the Sixth Circuit Court of Appeals helped define the meaning of “intrinsic” function in holding that toy airplanes, though useful in a general sense, were still copyright protected.148 In Gay Toys, the manufacturer of the “Air Coupe” toy airplane, Buddy L Corporation, sought to enforce its copyright on its toy airplanes against another toy manufacturer, Gay Toys, Inc.149 Gay Toys conceded that its product design team examined and referred to Buddy L Corporation’s “Air Coupe” in designing its “Flying Eagle I.”150 Subsequently, Buddy L notified Gay Toys that it was violating Buddy L’s copyright in its toy airplane.151 Gay Toys sought a declaratory judgment to invalidate Buddy L’s copyright, and Buddy L counterclaimed for copyright infringement.152
The district court invalidated Buddy L’s copyright in the “Air Coupe,” but the Sixth Circuit Court of Appeals reversed.153 In reversing the district court’s decision, the Sixth Circuit noted that the statutory requirement of a useful article is that it has an “intrinsic utilitarian function that is not merely to portray the appearance of the article.”154 The Sixth Circuit held that a toy airplane has no intrinsic utilitarian function other than to portray a real airplane.155
[*PG723] The court cited legislative history to illustrate that Congress intended to deny copyright protection to industrial products, such as televisions and automobiles.156 The court held that a toy airplane’s function is closer to that of a work of art—a painting of an airplane that is looked at and enjoyed—than the intrinsic utilitarian functions of industrial products.157 Essentially, toys do not have “an intrinsic function other than the portrayal of the real item,” and therefore, they are protected by copyright because they are not useful articles.158
In contrast, in 1987, in Brandir International, Inc. v. Cascade Pacific Lumber Co., the Second Circuit Court of Appeals applied the useful article doctrine to the plaintiff’s bicycle rack, the “RIBBON Rack,” and held it uncopyrightable because it was designed to serve a purely utilitarian function—to hold bicycles in place.159 The plaintiff, the original designer, sued the defendant after discovering that it was selling a product similar to the RIBBON Rack.160 The Court of Appeals held that the defendant did not violate any protectable expression by copying the RIBBON Rack, because the plaintiff designed the rack for purely utilitarian purposes.161 The plaintiff did not simply adopt the original wire sculpture that gave rise to the bicycle rack idea.162 Instead, the design of the RIBBON Rack was essentially a product of in[*PG724]dustrial design.163 The altered design features were in furtherance of a “safe, secure, and maintenance-free system of parking bicycles” instead of a work of art.164
In deciding this case, the court looked to determine whether the function of the bicycle rack could be separated from its aesthetic value—what is referred to as conceptual separability.165 On the one hand, the court renewed Judge Jon O. Newman’s dissent in Carol Barnhart Inc. v. Economy Cover Corp. and proposed that functional and aesthetic features are conceptually separable if “the article . . . stimulate[s] in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function.”166 On the other hand, the court discussed a leading scholar on useful articles, Robert Denicola, who views conceptual separability as the relationship between the design process and the actual work-product.167 Under Denicola’s test, a work is not copyrightable if its design elements reflect a merger of aesthetic and functional considerations.168 Conversely, conceptual separability does exist if and when a designer exercises artistic judgment to include certain artistic aspects that are unrelated to the functional elements of the work.169
The court followed Professor Denicola’s test of conceptual separability in holding that the artistic aspects of the RIBBON Rack were not conceptually separable from its utilitarian aspects.170 The RIBBON Rack possessed no artistic elements that could be identified as separate and “capable of existing independently, of, the utilitarian aspects of the article,” and accordingly, the court denied plaintiff’s copyright infringement claim.171
Assuming that a work is copyrightable despite the limitations of the idea-expression dichotomy, or the merger and useful article doctrines, a defendant may still be allowed to copy a copyrighted work by utilizing the fair use defense.172 Fair use was codified in the Copyright Act to reflect the common-law doctrine that others are entitled to use copyrighted material in a reasonable manner without an author’s consent.173 Although fair use is one of the most difficult doctrines to apply in copyright law, it remains a strong and valid defense for a defendant who, under ordinary circumstances, has copied, and thus, has infringed, another’s copyrighted work.174 In determining whether a work qualifies as fair use of a copyrighted work, a court examines the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and the effect of the use upon the potential market for or value of the copyrighted work.175 Thus, in the hypothetical presented in this Note, even if Firm X’s complaint qualifies as copyrightable subject matter, Firm Y may have a fair use defense for copying if Firm Y can show that it used Firm X’s complaint in a reasonable manner in accordance with the four fair use factors.176
In 1985, in Harper & Row, Publishers, Inc. v. Nation Enterprises, the U.S. Supreme Court held that the defendant’s use of the plaintiff’s work was too extreme to qualify as a fair use.177 In Harper & Row, the [*PG726]plaintiff agreed to publish Gerald Ford’s memoirs in A Time to Heal: The Autobiography of Gerald R. Ford.178 Time Magazine agreed to purchase from the plaintiffs the exclusive right to print prepublication excerpts in its magazine one week prior to shipment of the full-length book version to bookstores.179 Before Time Magazine was able to print the excerpts, however, the defendant received a copy of the unpublished manuscript of A Time to Heal and published excerpts in its own magazine—attempting to “scoop” Time Magazine’s article on the same subject.180 As a result of the defendant’s actions, Time Magazine canceled its piece and refused to pay the plaintiff.181
The plaintiff claimed that the defendant infringed its copyright, and the defendant raised the fair use defense.182 The Court examined the four elements of fair use and concluded that the defendant’s exploitation of the unpublished book did not qualify as a fair use of the plaintiff’s copyrighted material.183 First, the Court found that the purpose and character of the use was not only for commercial profit; it also exploited the copyrighted material without paying the customary price.184 The defendant’s intended purpose was to trump the copyright holder’s commercially valuable right of first publication, which nullifies any claim of good faith or fair dealing.185 Second, although the Court noted that the nature of the copyrighted work was factual and acknowledged the need to disseminate facts, the defendant did not merely copy factual information.186 The defendant also excerpted subjective descriptions and portraits, and such copying of the plaintiff’s individualized expression exceeded the necessity to disseminate facts, which helped persuade the Court to reject the fair use claim.187
Third, the Court examined the amount and substantiality of the portion used from the plaintiff’s work.188 The defendant only copied an insubstantial portion of the book.189 Nevertheless, the Court agreed with the district court’s finding that the excerpts copied were [*PG727]“essentially the heart of the book” because they were “the most interesting and moving parts” of the entire work.190
Finally, the fourth factor the Court considered was the effect of the defendant’s copying on the market.191 As the single most important element of fair use, the Court held that Time Magazine’s cancellation of the project and its refusal to pay the remaining balance were caused directly by the defendant’s infringement.192 The defendant was directly competing for a share of the market when it copied excerpts from the book, and allowing such a broad allowance of fair use would pose substantial damage to the marketability of first publication rights in general.193 Thus, the Court concluded that the defendant’s actions did not constitute a fair use of the plaintiff’s book because the copyrighted material was not used in a reasonable manner.194
Similarly, in 1999, in Nihon Keizai Shimbun, Inc. v. Comline Business Data, Inc., the Second Circuit Court of Appeals decided that copying news reports to construct abstracts did not qualify as fair use because the new work was not sufficiently transformative.195 The court first addressed the copyrightability of the news reports and found that there was original expression in the plaintiff’s reports apart from the uncopyrightable facts that it was reporting.196 The court then addressed whether the defendants’ abstracts qualified as a fair use of the plaintiff’s articles by examining the four fair use factors.197
First, the court held that the purpose and character test requires that the new work “adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.”198 This inquiry requires that the copying be substantially transformative.199 In Nihon Keizai, however, the defendants’ abstracts were “not in the least ‘transformative’” because the defendants did [*PG728]not add anything new in their works—they simply copied and translated the plaintiff’s reports without adding anything original.200 Therefore, the purpose and character of the use weighed against a finding of fair use.201
Second, in determining the nature of the plaintiff’s copyrighted news reports, the court agreed with the district court’s finding that the plaintiff’s articles were creative and original.202 The court recognized, however, that some copyrighted works are “closer to the core of intended copyright protection than others.”203 For instance, factual news articles, like the plaintiff’s reports, are further from “the core” than more artistic, fictional works of art.204 The court also held that the expressive elements in the plaintiff’s news reports, as opposed to the factual elements, were not the dominant features of the works.205 Overall, the court found that this factor was mostly neutral on the question of fair use.206
Third, in examining the amount and substantiality of the portions used in relation to the plaintiff’s copyrighted works, the court held that the defendants’ abstracts copied “the crucial facts and ideas” from the plaintiff’s reports.207 The defendants’ case for fair use, however, would have been stronger if they merely copied the factual content from the plaintiff’s reports.208 Instead, the defendants also copied the plaintiff’s copyrighted expression in structure, word choice, and factual arrangement.209 Accordingly, the amount of copying of protectable expression also weighed against a finding of fair use.210
Finally, in determining the effect of the use upon the potential market for the copyrighted work, the court considered not only the harm caused by the defendants, but also whether similar widespread conduct would have a substantial impact on the market for the original.211 This factor also worked against a finding of fair use because as [*PG729]copies of the plaintiff’s work, the defendants’ abstracts competed with and superseded the plaintiff’s articles.212 In conclusion, the court denied the defendants’ fair use claim because the copyrighted material was not used in a reasonable manner—the defendants’ abstracts were insufficiently transformative, copied too much of the plaintiff’s expression, and unfairly competed with the plaintiff’s reports.213
Returning to the hypothetical in the Introduction of this Note, the threshold issue is whether Firm X’s complaint is an original work of authorship.214 Before venturing into the analysis, however, several basic facts about Firm X’s class action complaint must be assumed.215 A legal complaint must state the nature of the action, such as a federal securities class action suit.216 Next, the complaint must set forth the respective parties and the basis for the court’s jurisdiction and venue.217 With respect to Firm X’s complaint, the main focus is on the allegations—often included in a “facts” section—which, ideally, help suggest to opposing counsel that the plaintiff’s case is strong.218 In the statement of facts, attorneys for Firm X presumably set forth their cause of action in the light most favorable to their clients, emphasizing favorable facts and minimizing the importance of other, less favorable facts—all in hopes that the facts are sufficient to constitute a cause or causes of action.219 With these assumptions in place, the inquiry shifts to whether Firm X’s complaint is copyrightable subject matter—specifically, whether Firm X’s complaint depicts the requisite “originality” under the Copyright Act so that Firm Y is precluded from copying the complaint.220
Firm X’s copyright in its class action complaint is copyrightable because it is an “original work[] of authorship fixed in a[] tangible medium of expression” that can be “perceived, reproduced, or otherwise communicated.”221 First, the complaint is “fixed in a[] tangible medium of expression” because it is in written form.222 In Burrow-Giles Lithographic Co. v. Sarony223 and Bleistein v. Donaldson Lithographing Co.224 the U.S. Supreme Court addressed the issue of whether photographs and chromolithographs, respectively, were encompassed in the “writings” that the Constitution was meant to protect.225 The Court in both cases held that the Constitution’s language encompassed “all forms of writing,” including printing, engravings, and other means by which authors’ ideas are given “visible expression.”226 By having the complaint in written and printed forms, Firm X’s attorneys have expressed their case in a visible format, thus satisfying the requirement of being “fixed in a[] tangible medium of expression.”227
Aside from requiring works to meet the fixation requirement, the Copyright Act also requires that copyright protection only extend to “original works of authorship.”228 Firm X’s complaint satisfies the originality standard because the complaint features at least a modicum of creativity.229 For instance, Firm X’s complaint, like the photograph of Oscar Wilde in Burrow-Giles, exhibits the author’s creative efforts in choosing sentence structure, factual interpretation, and word choice.230 The attorney who writes a complaint, like the photographer in Burrow-Giles who exhibited his creativity by posing Oscar [*PG731]Wilde, choosing an appropriate costume, and applying different light and shade, utilizes at least a minimal degree of creativity in selecting which facts to emphasize and even which words to use to emphasize the respective facts.231
Similarly, in Bleistein, the plaintiff’s circus posters were also original because they depicted the unique personality of the artist, regardless of whether the Court believed in their aesthetic merit.232 Moreover, the attorney drafting Firm X’s complaint need not be as artistic as the circus poster designer in Bleistein, because originality is not determined by aesthetic merit.233 Additionally, Firm X’s complaint also depicts the author’s unique personality because it encompasses the author’s creative choice of words and sentence structure.234 Therefore, under the Bleistein and Burrow-Giles standards, Firm X’s complaint is copyrightable subject matter because it is sufficiently original.235
Additionally, Firm X’s complaint is also copyrightable subject matter under the Feist Publications v. Rural Telephone Service, Co.236 and Nihon Keizai Shimbun, Inc. v. Comline Business Data, Inc.237 standards.238 Facts, such those enumerated in a legal complaint, are generally uncopyrightable, but a compilation of facts is copyrightable so long as there is some modicum of creativity, such as an original selection or arrangement of facts.239 Unlike the telephone directory in Feist, which displayed an entirely typical selection and arrangement of telephone numbers, an attorney drafting Firm X’s complaint likely considers the facts necessary to prove the client’s claim, and accordingly, arranges and chooses the facts to express the claim in a light most favorable to the client.240 Thus, as suggested by the Court in Feist, the attorney’s creativity in selecting and arranging the facts in the complaint should be found sufficiently original to warrant copyright protection.241
Moreover, Firm X’s complaint is similar to the plaintiff’s news report in Nihon Keizai because both works express factual information in [*PG732]a creatively expressive manner.242 Like the news reports in Nihon Keizai, an attorney’s arrangement of facts, word choice, sentence structure, and analysis are all forms of protectable expression.243 Firm Y would be infringing on Firm X’s copyright by copying Firm X’s complaint, because Firm Y would be copying someone else’s interpretation of events, choice of words, and factual emphasis.244 Despite the rule that facts are not copyrightable, Firm X’s complaint is copyrightable because it encompasses protected expression in the form of word choice and arrangement, sentence structure, and claim analysis.245 Essentially, Firm X does not have a copyright over the factual events that occurred in its client’s case—that is, Firm Y may freely copy facts—but Firm X does have a copyright in its expression and interpretation of those facts.246
The idea-expression dichotomy also does not limit Firm X’s copyright in its complaint because the complaint does not express an “idea.”247 Unlike the plaintiff’s attempt to copyright the art of bookkeeping in Baker v. Selden,248 Firm X does not want to copyright the art or method of drafting complaints.249 Indeed, Firm X merely wants to protect its creation of a specific complaint, drafted for a specific client, for a specific cause of action.250 Moreover, Firm X is not copyrighting its specific cause of action.251 Consistent with Judge Hand’s decision in Nichols v. Universal Pictures Corp.,252 Firm X is not copyrighting a “general idea” in complaints—instead, it is copyrighting the specific aspects of its complaint, such as the factual interpretation of how its client will prevail at trial.253 Copyrighting Firm X’s complaint does not preclude all others from practicing the art of drafting complaints—importantly, [*PG733]another firm, such as Firm Y, is still free to draft a complaint for the same case so long as its complaint is sufficiently original.254
If anything, Firm X’s complaint embodies the idea that its client should prevail in a cause of action, and Firm X’s complaint is merely an expression of this idea.255 Other firms are free to express the idea in their own creative and original manner, because Firm X is claiming rights to the complaint’s expressive content only, not its idea or its facts.256
In addition, Firm X’s complaint is not precluded from copyright protection under the merger doctrine because there are more than a limited number of ways to express the content and idea of the complaint.257 Unlike “Rule 1” in Morrissey v. Proctor & Gamble Co.,258 which could be expressed only in a limited number of ways, a complaint drafted for a specific cause of action can be organized and expressed in more than a “mere handful” of ways.259 The subject matter embodied in a complaint is not as straightforward and simple as a sweepstakes contest rule that instructs entrants on how to enter a contest.260
In drafting a complaint, an attorney must organize and present the facts of a case in an understandable and brief fashion.261 An attorney chooses specific words—emotive or neutral—to present the case in the most favorable way possible.262 This thought-provoking and time-consuming process likely does not produce only a handful of ways to draft a complaint.263 Although it is likely that skilled attorneys will focus on similar facts, they likely will not express them in the exact same manner, with the exact same adjectives, or in the exact same order.264 Moreover, though brevity and precision are basic tenets of complaint writing, adherence to these rules need not deprive a com[*PG734]plaint of vigor or uniqueness—it may very well add to the complaint’s presentation and dramatic impact.265 Indeed, part of the drafting attorney’s task is to predict opposing counsel’s reaction to the complaint, and in doing so, make crucial “artistic” decisions regarding the presentation of the complaint.266 Accordingly, Firm X’s complaint is not similar to “Rule 1” in Morrissey, because the idea of the complaint—that the client deserves relief—can be expressed in numerous ways depending on the attorney interpreting the case, the relief sought, and the claims alleged.267 Firm X’s complaint does not foreclose other methods of expressing the same idea of seeking relief for the client, and accordingly, the merger doctrine does not limit Firm X’s copyright in its complaint.268
In addition, the useful article doctrine does not limit copyright protection for Firm X’s complaint because it is unlikely that a legal complaint serves “an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”269 Therefore, in determining whether complaints are useful articles, the question is whether legal complaints have an intrinsic utilitarian function apart from conveying information.270
The toy airplanes in Gay Toys, Inc. v. Buddy L Corp.,271 though useful for upbringing children, were not viewed as possessing an intrinsic utilitarian function because their main purpose was to portray the appearance of an article—namely, an airplane.272 The toy airplanes in dispute in Gay Toys did not have a utilitarian function other than portraying airplanes, and accordingly, the useful article doctrine was not applicable.273 In contrast, a legal complaint is used to convey information about the parties to a lawsuit, the claims alleged, and the factual circumstances of the allegations.274 This function, in itself, is useful, but the test is [*PG735]whether the complaint serves an intrinsic function other than conveying the lawsuit’s information.275 A legal complaint, like the toy airplane, does not serve any purpose other than to convey information.276
Moreover, Firm X’s complaint, unlike the RIBBON Rack in Brandir International, Inc. v. Cascade Pacific Lumber Co.,277 is not a useful article because the functional and aesthetic elements of a legal complaint, unlike those of a bike rack, are conceptually separable.278 In Brandir, the designer of the bicycle rack did not include any artistic elements independent of the function of the bicycle rack, and therefore, there was no conceptual separability and the useful article doctrine applied.279 Firm X’s attorney does not draft a complaint for the sole purpose of reporting facts—indeed, attorneys write to express and to persuade that their claims should prevail.280 Additionally, the artistic elements of a legal complaint—the author’s expression, sentence structure, and factual analysis—are distinguishable from the functional, informative aspects of a complaint.281 In other words, the artistic elements of persuasion in an attorney’s word choice, sentence structure, and analysis in a complaint are capable of existing independently from the utilitarian aspects of the article, which consist mostly of facts.282 Therefore, an article’s ability to convey factual information does not automatically make it a “useful article” with limited copyright protection.283
Firm Y will be unable to plead the fair use defense effectively regarding its copying of Firm X’s complaint because it is not using Firm X’s copyrighted material in a reasonable manner; in other words, none of the four elements of fair use works in Firm Y’s favor.284 First, like the copying in both Harper & Row, Publishers, Inc. v. Nation Enterprises285 and Nihon Keizai,286 the purpose and character of Firm Y’s use of Firm X’s complaint is not fair use because it is for commercial profit and is not substantially transformative.287 In 1985, in Harper & Row, the U.S. Supreme Court held that the defendant’s actions—copying material excerpts out of a book—were not fair use because its intended purpose was to trump the copyright holder’s right of first publication.288 Technically, Firm Y is unable to “trump” Firm X’s complaint because Firm X’s complaint is already available and in existence.289 Firm Y can, however, entice and lure other class action clients to utilize its services by, for instance, charging lower legal fees due to an already-existing complaint.290 The complaint, however, is solely Firm X’s work product, and Firm Y’s copying would compete unfairly with Firm X.291 Denying Firm X copyright protection for its complaint would hinder competition, because no law firm would have an incentive to be the “first” to write a complaint knowing other law firms may subsequently copy its complaint for use in the same case.292 Therefore, extending copyright to the complaint and denying Firm Y’s fair use claim would provide an incentive for law firms to accept cases actively, and to draft complaints with the confidence that competing firms will not usurp their efforts.293
[*PG737] Additionally, the purpose and character of Firm Y’s use of Firm X’s complaint is not at all “transformative” as is required in Nihon Keizai.294 The defendants in Nihon Keizai copied the plaintiff’s news reports to sell the reports as abstracts.295 The defendants did not add anything new or original in their abstracts to “transform” sufficiently the plaintiff’s work.296 Accordingly, Firm Y’s verbatim copying of Firm X’s complaint does not meet the sufficiently “transformative” threshold because Firm Y did not add anything to the complaint—except, perhaps, its signature and address on the certification page, as well as the plaintiff’s information.297 Therefore, the character and purpose of Firm Y’s copying of Firm X’s complaint—verbatim copying that lacks originality and transformative quality––weighs against a finding of fair use.298
The second element of fair use—the nature of the copyrighted work—also warrants a finding against fair use because Firm X’s complaint is original and creative by virtue of the author’s choice of words, sentence structure, and overall organization.299 Firm Y may argue that a complaint is fact-based, and therefore, uncopyrightable because facts are uncopyrightable subject matter.300 The copyrighted works in Harper & Row and Nihon Keizai, however, were also factual works—an autobiography of Gerald Ford and news reports, respectively—but fair use was denied in both cases.301 Although fact-based works may not be as close to the core of intended copyrightable works, they may still receive protection if expressed with sufficient originality.302 Essentially, the facts, themselves, may be copied, but the author’s expression is copyright protected.303 Therefore, Firm Y would better off copying only the uncopyrightable facts in Firm X’s complaint; verbatim copying of the entire complaint, however—facts and copyrightable expression––does not support a finding of fair use.304
The third element of fair use, the amount and substantiality copied, is not difficult to evaluate in Firm Y’s case because it is assumed [*PG738]that Firm Y made a virtually verbatim copy of Firm X’s complaint.305 Accordingly, Firm Y also copied Firm X’s word choice, factual arrangement, and other protected expression, which operates against a finding of fair use.306
Finally, the most important factor in determining fair use—the market effect of Firm Y’s copying Firm X’s complaint—also works against a finding of fair use.307 Like the defendant in Harper & Row who copied excerpts of a book in order to “scoop” Time Magazine’s article on the same topic, Firm Y is using Firm X’s complaint to avoid repeating Firm X’s hard work and to lure clients through lower complaint-drafting costs.308 Firm Y is thus competing for a share of the market with an unfair advantage—essentially, Firm X has already completed the work and Firm Y is free-riding off the completed complaint.309
Moreover, the court in Nihon Keizai not only considered the impact on the market, but also questioned whether widespread conduct would have a substantial impact on the market for the original work.310 The “market” for legal complaints resides in the overall market for legal services, which undoubtedly would be affected if law firms could copy each other’s complaints freely.311 In the hypothetical class action lawsuit, no law firm would have the incentive or motivation to be the first firm to draft a complaint because other law firms could immediately reproduce the complaint for other clients in the class.312 This lack of incentive may cause unnecessary delays in filing lawsuits, and additionally, clients may also sit and wait until a “copy-able” complaint is produced so that they can seek out a law firm that can copy the complaint.313 By doing so, the clients will not have to pay the corresponding attorney’s fees for time spent drafting a complaint [*PG739]because a suitable complaint has already been drafted.314 Extending copyright protection to Firm X’s complaint ensures competition among firms, and allows clients to seek legal counsel freely without wondering whether they should wait for another plaintiff in the class to act first.315 Due to the detrimental market effects that follow from copying Firm X’s complaint, a court likely would deny Firm Y’s fair use defense.316 Overall, the purpose and character of Firm Y’s copying, the nature of Firm X’s complaint, the amount and substantiality copied, and the effect of the use upon the potential market support a finding against fair use.317
Firm X’s legal complaint easily meets the Copyright Act’s originality requirement because it reflects a modicum of creativity through the author’s selection and arrangement of facts, expression, and analysis. Based on copyright case law, firms like Firm X should hold a valid copyright in their legal complaints, and accordingly, law firms like Firm Y would be liable for copyright infringement were they to file virtually identical complaints.
Despite the various limitations to copyrightability, Firm Y would be unable to succeed in defending its actions against Firm X by raising the typical arguments against copyrightability. For instance, legal complaints do not express ideas so the idea-expression dichotomy as set forth in Baker v. Selden would not invalidate Firm X’s copyright. In addition, the merger doctrine also would not limit Firm X’s copyright in its complaint because, unlike the contest rule in Morrissey v. Procter & Gamble Co., there are likely more than a limited number of ways to express the ideas within a legal complaint. Moreover, unlike the bicycle rack in Brandir International, Inc. v. Cascade Pacific Lumber Co., the useful article doctrine also would not apply against Firm X because a legal complaint does not serve a utilitarian function other than conveying information.
Finally, Firm Y could not successfully plead the fair use defense for its copying because the type of verbatim copying of another firm’s [*PG740]complaint discussed herein is not fair use based on the four factors enunciated in Harper & Row, Publishers, Inc. v. Nation Enterprises and Nihon Keizai Shimbun, Inc. v. Comline Business Data, Inc.: the purpose and character of the infringing use; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for or value of the copyrighted work. Thus, Firm X possesses a valid copyright in its legal complaint such that other firms, like Firm Y, are precluded from copying.