William & Mary Law Review Volume 34 (1992-1993) Issue 3 Article 8 March 1993 Rethinking Originality Russ VerSteeg Follow this and additional works at: https://scholarship.law.wm.edu/wmlr Part of the Intellectual Property Law Commons Repository Citation Russ VerSteeg, Rethinking Originality, 34 Wm. & Mary L. Rev. 801 (1993), https://scholarship.law.wm.edu/wmlr/vol34/iss3/8 Copyright c 1993 by the authors. This article is brought to you by the William & Mary Law School Scholarship Repository. https://scholarship.law.wm.edu/wmlr RETHINKING ORIGINALITY Russ VERSTEEG* I. INTRODUCTION ....................................... 802 II. SUBSTANCE: THE THREE CLASSIFICATIONS ............. 814 A. Compilations................................ 814 B. Derivative Works ............................ 815 C. FreestandingWorks ......................... 816 D. Class Significance ........................... 817 III. TYPE II ORIGINALITY ................................. 818 A. Two Dominant Articulations ................. 818 B. Feist and the "Modicum of Creativity" ........ 818 C. Toward a Legal Definition of "Creativity"...... 824 D. Alfred Bell and Trivial/Distinguishable Variation ................................... 843 1. The Standard and the Problem .......... 843 2. Variations.............................. 846 3. Triviality: Concrete and Abstract ........ 848 E. Case Studies ................................ 856 1. Compilations:West Publishing Co. v. Mead Data Central Inc ........................ 857 2. Derivative Works: L. Batlin & Son v. Snyder ................................ 861 3. Freestanding Works: Toro Co. v. R & R Products Co . ........................... 867 IV. TYPE I ORIGINALITY .................................. 873 * Assistant Professor, New England School of Law. A.B., University of North Carolina at Chapel Hill, 1979; J.D., University of Connecticut School of Law, 1987. I am grateful to Ralph Brown, Jane Ginsburg, Amy B. Cohen, and Brian A. Dahl, who provided me with helpful comments and suggestions on an earlier draft. I would like to thank Dr. Ruth Rich- ards, M.D., Ph.D., for her help in my research of the psychological aspects of creativity. I would also like to thank Barry Stearns and the entire staff of the law library at New Eng- land School of Law as well as my research assistant, Sandra Paul. Finally, I am most grate- ful to John O'Brien, Dean of New England School of Law, and the Board of Trustees for ensuring that I had the time and funding to complete this Article. WILLIAM AND MARY LAW REVIEW [Vol. 34:801 V. A SEMANTIC PROBLEM?: "TYPE II ORIGINALITY" VERSUS "AUTHORSHIP" OR "WORK" .......................... 877 VI. CONCLUSION ..................................... 882 It is a very commonplace truth that before discussing anything, it is well to define the object of the discussion. Without this ele- mentary precaution, the disputants run the risk of talking a great deal without advancing a single step, and of tearing out each others' hair when as a matter of fact they really agree. This is universally known, but seldom taken into account, at least in practical life. In juridical life, definitions were for long periods dispensed with. Even some highly developed and subtle legal works pre- suppose that everybody knows what they are talking about, and give no explanation of the most complex ideas. In other periods, quite the contrary, the definition dominates juridical science. It is discovered in the writings of the legislator and the judge as well as in those of the jurist. Its function is no longer simply to clarify debate. It has become an active factor in the formation of law. It suggests to legal practice solutions which appear incon- testable. It directs the progress of the law . .. I. INTRODUCTION In order to be copyrightable, a work must be "original," and, in fact, the United States Supreme Court has recognized that "[tihe sine qua non of copyright is originality."'2 The Copyright Act of 19763 explicitly requires originality, 4 and the Supreme Court has 1. PIERRE DE TOURTOULON, PHILOSOPHY IN THE DEVELOPMENT OF LAW 327-28 (Martha McC. Read trans., 1922). 2. Feist Publications, Inc. v. Rural Tel. Serv. Co., 111 S. Ct. 1282, 1287 (1991). The Feist Court expressly recognized that "[t]o qualify for copyright protection, a work must be origi- nal to the author." Id. (citing Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 556 (1985)). The Court forcefully added that "[t]he originality requirement . re- mains the touchstone of copyright protection" and that "[i]t is the very 'premise of copy- right law.' " Id. at 1288 (citations omitted); see 1 PAUL GOLDSTEIN, COPYRIGHT §§ 1.2.2.3, 2.2.1 (1989); MARSHALL A. LEAFFER, UNDERSTANDING COPYRIGHT LAW §§ 2.7-.11 (1989); 1 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT §§ 2.01, 2.05[D], 2.08[A][3], [B], (C][21, [E], [GI[3], 2.10[A][21, 3.03-.04 (1992) [hereinafter NIMMER]. 3. 17 U.S.C. §§ 101-914 (1988 & Supp. III 1991). 4. The Copyright Act states that "[c]opyright protection subsists ... in originalworks of authorship .... " Id. § 102(a) (emphasis added). 1993] RETHINKING ORIGINALITY held that the Constitution itself established the originality require- ment.5 However, because neither the Copyright Act6 nor the courts7 has defined copyright originality in a clear manner, there remains today a blurred vision of what the term "originality" 5. Feist, 111 S. Ct. at 1288. The Court asserted: Originality is a constitutional requirement. The source of Congress' power to enact copyright laws is Article I, § 8, cl.8, of the Constitution, which autho- rizes Congress to "secur[e] for limited Times to Authors . the exclusive Right to their respective Writings." In two decisions from the late 19th Cen- tury-The Trade-Mark Cases, 100 U.S. 82 (1879); and Burrow-Giles Litho- graphic v. Sarony, 111 U.S. 53 (1884)-this Court defined the crucial terms "authors" and "writings." In so doing, the court made it unmistakably clear that these terms presuppose a degree of originality. Id. (parallel citations omitted). The Court added that Professors Patterson and Joyce had made the point by succinctly stating that" '[t]he originality requirement is constitutionally mandated for all works."' Id. (quoting L. Ray Patterson & Craig Joyce, Monopolizing the Law: The Scope of Copyright Protectionfor Law Reports and Statutory Compilations, 36 UCLA L. REv.719, 763 n.155 (1989)). One commentator has summarized the origins of originality as follows: There has been much theorizing about the legal genealogy of the requirement of originality. The Copyright Clause of the U.S. Constitution has been cited as the earliest ancestor under two theories. [Article I, § 8, cl.8 of the Constitution grants the power to Congress "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."] One theory holds that the phrase "To promote the Progress of Science and useful Arts" requires that a work contain some substantial originality in order to receive copyright protec- tion. The second theory holds that the use of the term "authors" requires a modicum of originality, at least more than the mere copying of public domain materials. Whatever its genealogy, it is beyond question that an "original work of authorship" is required by the 1976 Act. David C. Stimson, Note, Factual Compilations-CopyrightProtection for CompilationDe- pends on Degree of Originality Involved in Assembling Facts-Financial Information, Inc. v. Moody's Investors Service, Inc., 33 J. COPYRIGHT Soc'Y 1, 14-15 (1985) (footnotes omitted). 6. Congress deliberately left the term "originality" undefined in the Copyright Act of 1976 in order to engraft the standard of originality established by judicial decisions under the 1909 Act. H.R. REP. No. 1476, 94th Cong., 2d Sess. 51 (1976); see 1 GOLDSTEIN, supra note 2, §§ 1.2.2.1, 1.2.2.3, 2.2.1, at 65 n.15; LEAFFER, supra note 2, § 2.7[A]; 1 NIMMER, supra note 2, § 2.01; Dale P. Olson, Copyright Originality, 48 Mo. L. REv. 29, 31 (1983). 7. As this Article demonstrates, courts have fashioned numerous definitions and legal tests for originality. However, the inconsistencies and impracticalities of those judge-made definitions render them virtually useless. One commentator has observed that "courts have yet to agree upon a universal test of originality to be applied in all cases." Alan T. Dworkin, Originalityin the Law of Copyright, 39 B.U. L. REv. 526, 526 (1959), reprinted in 11 Copy- RIGHT L. SYMP. (ASCAP) 60, 60 (1962). 804 WILLIAM AND MARY LAW REVIEW [Vol. 34:801 means in copyright law.8 In addition to failing to provide an ade- quate definition of originality, Congress and the courts have failed to offer meaningful standards for determining when a work is origi- nal. This Article aspires to bring that definition into sharper focus and to offer some explanations of useful and pragmatic standards that may be applied in evaluating copyright originality. One underlying theme that this Article advances is that the fun- damental concept of copyright originality ought to be much sim- pler than courts treat it presently. Many have proposed that origi- nality is a relative concept that has different meanings depending upon the nature of the work in question.9 Originality jurisprudence 8.A number of commentators have done a great deal to fill in the statutory and judicial gaps in defining originality. Particularly useful in their analysis and-something to which this Article does not even aspire-their explication of the broad historical evolution of origi- nality in the law of copyright are the following: Ralph S. Brown, Eligibility for Copyright Protection:A Search for PrincipledStandards, 70 MINN. L. REV. 579 (1985); Robert C. Den- icola, Copyright in Collections of Facts:A Theory for the Protection of Nonfiction Literary Works, 81 COLUM. L. REV. 516 (1983); Dworkin, supra note 7; Jane C. Ginsburg, Creation and Commercial Value: Copyright Protection of Works of Information, 90 COLUM. L. REV. 1865 (1990); Wendy J. Gordon, An Inquiry into the Merits of Copyright: The Challenges of Consistency, Consent, and Encouragement Theory, 41 STAN.