INTELLECTUAL PROPERTY RIGHT - I

THE RELEVANCE OF IDEA-EXPRESSION DICHOTOMY UNDER

COPYRIGHT LAW: THE DIFFERENCE BETWEEN IDEA AND
EXPRESSION AND WHY ONLY THE MANIFESTATION OF IDEA (i.e.
EXPRESSION) AND NOT THE IDEA ITSELF CAN BE GRANTED THE
PROTECTION OF COPYRIGHT IN THE CONTEXT OF COMPUTER
PROGRAMS

SYNOPSIS

SUBMITTED BY : SUBMITTED TO :
PAWAN PRATAP SINGH Dr. M.R.SREENIVASA MURTHY
SEMESTER – VI ‘A’ ASSOCIATE PROFESSOR
ROLL NO. : 874 NUSRL, RANCHI

NATIONAL UNIVERSITY OF STUDY AND RESEARCH IN

LAW, RANCHI
 Table of Contents
Introduction……………………………………………………………………………………3
Objectives…………..………………………………………………………………………….6
Hypothesis………………………………………………………………………………….….6
Research Methodology………………………………………………………………………...6
Limitation of the Study………………….
……………………………………………………..6
Scheme of the Study…………………………………………………………………………...7

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 Introduction

The principle ‘the law must keep up with human development and progress’ is quite a clichéd
one. But it can hardly be described thus, if one were to consider the growing relevance of
software and technology in modern times. However on a practical scale, this evolution of the
law is often fraught with difficulties given its reliance on principles and practices that have
since time immemorial become its essence1. So the question that we must consider here is
how one needs to go about reconciling these governing standards of the law with the growing
need for its evolution so that it is possible for one to encompass computer software protection
into the law. It is in this context that this dichotomy between idea and expression has arisen.
Thus, if one seeks to understand the problems that we are facing with current copyright law
and its application to computer software protection, one must first understand the nature of
the afore-mentioned dichotomy between ideas and expression2.

The essential difference between the two has been classified as the foundation upon which
copyright law rests. Courts have traditionally declined to put forth a straitjacket definition for
the term idea. An idea has been described as a thought, as a mental image, as a conception of
a theory3. In layman terms, an idea can thus be described as a formulation of thought on a
particular subject while expression would constitute implementing the said idea. Needless to
state, the same idea can have numerous expressions and this is where the issue of copyright
arises. If the same idea can be expressed in a number of different ways, a number of different
copyrights may coexist and no infringement will result4.

1
Sheldon v Metro-Goldwyn Pictures Corp., 7 F. Supp. 837 (S.D.N.Y. 1934).
2
Bartok v Boosey & Hawkes, Inc., 523 F.2d 941 (2d Cir. 1975). 
3
Copyright Office, Ideas, Methods, or Systems, Circular R31 (1985) is a document that is presumably of less
authority than the regulation itself. The circular also describes the difference between idea and expression:
Copyright protection extends to a description, explanation, or illustration of an idea or system, assuming that the
requirements of the copyright law are met. Copyright in such a case protects the particular literary or pictorial
expression chosen by the author. However, it gives the copyright owner no exclusive rights in the idea, method,
or system involved.
Id. The explanation implies that the dichotomy is not appropriately applied at the registration stage—nor,
arguably, as a "threshold" test of copyright. An illustration is provided, which also emphasizes the works of
utility doctrine:
       Suppose, for example, that an author writes a book explaining a new system for food processing. The
copyright . . . will prevent others from publishing the text and illustrations describing the author's ideas for
machinery, processes, and merchandising methods. However, it will not give the author any rights against others
who adopt the ideas for commercial purposes, or who develop or use the machinery, processes, or methods
described in the book.
Id. The excerpt states that an author is protected not only in the text but in the illustrations describing the idea, a
statement that might indicate a different outcome in the Baker case if the charts ("illustrations") had been more
closely copied.
4
Nichols v Universal Pictures Corp., 45 F.2d 119, 121.

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However, one is faced with a problem when it becomes difficult to delineate between the idea
and its expression. Herein lies the idea of merger where an idea and the expression cannot be
separated and they are said to have merged. When merger has occurred, the expression may
not be copyrighted, because to do so would in effect be copyrighting the idea 5. However an
oft quoted policy concern of this doctrine is that, when the idea and its expression are thus
inseparable, protecting the expression in such circumstances would confer a monopoly of the
idea upon the copyright owner6.

At the same time, an idea can also have certain expressions, without which the idea cannot
exist. In other words, there can exist an idea where changing the expression of the same in a
particular form would, in effect change the very idea itself. Most courts consider these
essential ideas not copyrightable, as to copyright them would also, in effect, copyright the
idea. This type of merger is sometimes called scenes a faire. Another example of merger is
when there are only a very few ways to express a given idea. This is called the ‘Idea-
expression identity’ exception when specific instructions, even though previously
copyrighted, are the only and essential means of accomplishing a given task, their later use by
another will not amount to an infringement7. Although the idea/expression dichotomy is such
a time-honored doctrine, it has long been subject to fierce criticisms for its failure to provide
practical guidelines underneath its metaphysical surface. The intricacy lies in the fact that
very few, if any, works contain exclusively either ideas or expressions. Indeed, almost any
work can be abstracted into a spectrum of various levels of generality, at one extreme of
which is the principal goal or theme of the work and the other extreme is the literary
expression8.

Separation of expressions from the underlying ideas is not always easy as it sounds. When it
comes to computer programmes it gets all the more difficult due to the presence of both
literal as well as technical expressions. The parameters for distinguishing between the idea
and expressions are all evolved by the courts and there is no statutory guidance on it. Article
9 (2) of the TRIPS Agreement9 states that only expressions are protected and not ideas,
procedures or mathematical concepts. Article 1(2) of the European Union Software

5
Omnibus Copyright Revision: Hearings on S. 597 before the Subcomm. on Patents, Trademarks and
Copyrights of the Senate Comm. on the Judiciary 90th Cong., 1st Sess. 192-200 (1967), reprinted in 9 Omnibus
Copyright Legislative History 196-98, 570 (1976).
6
Krofft, 562 F.2d at 1163.
7
Apple Computers v Formula International Inc., 725 F.2d 521, 525 (9th Cir. 1984).
8
Durham Indus., 630 F.2d at 908-11.
9
Trade Related Aspects of Intellectual Property Rights, 1996.

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Directive10 states that ideas which underlie any element of the computer programme are not
protectable. Under Indian Copyright Act 1957 neither term “idea” nor “expression” is
defined. So the job of distinguishing between the two is entirely left to the courts. The courts
have right from the Whelan case11 to the recent Oracle case12 struggled to determine the
protectable elements in computer programmes. In this Article my attempt will be to critically
analyze the court judgments on the idea/expression dichotomy.

10
Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009;
http://eurlex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:111:0016:0022:EN:PDF, last visited on
20.03.2021.
11
Whelan Association Inc. v Jaslow Dental Laboratory; (1986) 797 F.2d 1222 (3rd Cir.).
12
Oracle v Google; (2014), US Court of Appeals.

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Objectives

 To study when an idea is expressed so to become a subject of copyright law.

 To study various theories related to Idea-Expression Dichotomy
 To study the exceptions to Idea-Expression Dichotomy

Hypothesis

The researcher believes that since copyright subsists in expression, it must be very
difficult for the court to determine when the idea has become an expression especially in
cases of computer programmes. Researcher also believes that the Doctrine of Merger has
been used mostly as a defense for copyright infringement.

Limitations of Study

Resources: The very subject has got only few books to study.

Research Methodology

This research work is based on secondary method of research. It is based on theoretical

studies and various cases have been used to substantiate the points made in the paper.

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 Scheme of the Study

Chapter 1. Introduction : Idea-Expression

Chapter 2. Historical Background

Chapter 3. Idea-Expression Dichotomy: Indian Context

Chapter 4. Idea-Expression Dichotomy in Computer Programs: Case Study

Chapter 5. Conclusions and Suggestions