2021 Re-sit

‘The distinction between unprotected idea and protected expression is highly

significant in copyright law. However, the distinction is very difficult to draw.’ Discuss
Introduction
 Millar v. Taylor, Yates J. Explained that
“Ideas are free. But while the author confines them to his study, they are like
birds in a cage, which none but he can have the right to let fly for, till he thinks
proper to emancipate them, they are under his own dominion”
 (Ladbroke v William Hill (1962)) - Lord Denning MR-
'Ideas, thoughts, fancies in a man's brain are not protected', but once reduced
to material form are capable of copyright protection (Ladbroke v William Hill
(1962)) - Lord Denning MR
 Samuels, E. (1989), ‘The Idea-Expression Dichotomy in Copyright Law', 56
Tenn. L. Rev. 321
“There is hardly a single principle of copyright law that is more basic or more
often repeated than the so-called idea-expression dichotomy” –Professor
Samuel
 Hollinrake v Trustwell (1894) 3 Ch. 420
 “Copyright does not extend to ideas, or schemes, or systems, or methods; it is
confined to their expression; and if their expression is not copied, the copyright
is not infringed.” – Lindley LJ-
 Nichols v Universal Pictures Corp (1930) 45 F 2d 119
“...nobody has ever been able to fix that boundary and nobody ever can.” –
Judge Learned Hand
 The problem of idea/expression dichotomy is Copyright Law in Intellectual
Property is always a big headache to Judges, lawyers, academicians and law
students with conflicting case laws. Is it possible to draw a clear border or at
least guidelines to distinguish idea/expression with set of rules?

Gist of answer
The Rationale of Idea/Expression Dichotomy

 The main function of intellectual property right is to encourage innovation. The

use of ideas, facts, concepts and systems is of vital importance for the
furtherance of scientific and industrial activities in production and innovation.
 Hence, vesting exclusive rights in them could hinder the progress of innovation.
However, this does not mean that ideas are never meant to be exclusively
owned and monopolised.
 In fact, the very function of patent law is to protect ideas and enable the owner
to own and monopolise them exclusively.
 Besides, intellectual property rights also aim at rewarding the author. The idea
and expression dichotomy creates a balance between this aim and the needs
of society. Although the content of a work will stay in the public domain, the
expression can be protected and thus secure a reward to the author.
  It follows that copyright also aims at protecting useful investments by securing
a fair return on investment with regard to products which, because of their non-
physical nature, can particularly be easily imitated once they have been
developed.
 The logic behind this concept is that if copyright were extended to over ideas,
it would give the first in the field a monopoly which would last for a considerable
long period of time and as far as computer software is concerned, it would
surely have undesirable effects on competition thus affecting innovation.
 According to Bainbridge (1999), one of the reason we see the rapid
development in the computer industry as it is today is because copyright law
has managed to strike a balance between competing interest between the
society and the author.

Substantial Part
 Section 16 CDPA 1988: The acts restricted by copyright in a work.
(3) References in this Part to the doing of an act restricted by the copyright in a
work are to the doing of it—
(a) In relation to the work as a whole or any substantial part of it, and
(b) Either directly or indirectly;
And it is immaterial whether any intervening acts themselves infringe copyright.
 Section 16(3) of the CDPA states that the defendant may take the whole of the
claimant’s work or a substantial part of it. ‘Substantial’ is determined not by
reference to how much of the work has been taken, but by whether the essence
of the work is reproduced. It involves quality not quantity. Substantial taking
reflect on how far they can be reconciled with the idea/expression dichotomy.
 The decision in another Designers Guild Ltd v Russell Williams (Textiles) Ltd
(2000) provides useful illustration of the requirement that the defendant must
take the expression of
 The work, not its underlying idea, in order to be liable for copyright infringement
 In Designers Guild v Williams, Lord Hoffman reviewed the case law on ideas
and expression, and concluded that it supported two quite distinct propositions.
(1) Copyright work may express certain ideas which are not protected because
they have no connection with the literary, dramatic, musical or artistic nature
of the work. This is the case with a literary work which described a system
or an invention.
Kleeneze Ltd v DRG (UK),
Whitford J found there had been no infringement of copyright in the
claimant’s drawing of a letterbox draught excluder, where the
defendant had merely taken the concept of the draught excluder.
(2) The other proposition is that certain ideas expressed by a copyright work
may not be protected because, although they are ideas of a literary,
dramatic, or artistic nature, they are not original, or so commonplace as not
to form a substantial part of the work.
Lord Hoffman gave the example of Kenrick v Lawrence
 β A copyright subsisted in the drawing hands, if in so doing all
that was reproduced was the idea. As Lord Hoffman
explained, “[a]t that level of abstraction, the idea, though
expressed in the design, would not have represented
sufficient of the author’s skill and labour to attract copyright
protection.
β Lord Hoffman’s articulation of the rule that ideas are
unprotected is helpful in that it recognizes that the vagueness
of the concept of ‘idea’ is likely to lead to misinterpretation of
the nature and scope of the exclusion. However his attempt to
pin down the rule that copyright is not infringed by the use of
some ideas is open to criticism that it lacks clarity, is
incomplete and might produce an unduly limited account of
the exception.
β Failing to acknowledge the rule based on public policy
suggests that if general ideas embody substantial labour and
skill they will benefit from protection. This would be novel, and
undesirable, outcome.
 Navitaire v EasyJet (2006)
The owner of copyright in a source code brought an action against a
former licensee who having never seen the source code, tried to
emulate the functional behaviour of a program. Pumfrey J found no
infringement, stressing that the functional behaviour of a program
was different from a plot of a novel and that policy weighed against
protecting the ‘business logic’ of a program through copyright.
 Nova Productions Ltd v Bell Fruit Games (2006)
Kitchen J held that similarities between video games were
attributable to general ideas which had ‘little to do with skills and
effort’ expended by the programmer. This was affirmed on appeal,
Jacob LJ concluding that ‘what was found to have inspired some
aspects of the defendant’s game is just too general to amount to a
substantial part of the claimant’s game.
 Beignet v Random House (The da Vinci Code case) (2006)
Peter Smith J held that Dan Brown’s book did not infringe copyright
in Beignet and Leigh’s The Holy Blood and The Holy Grail. In
essence, Peter Smith J held that Brown had used HBHG but what
was taken was facts and ideas at such a level of abstraction that
there was no infringement. In so holding, the judge observed that the
line between idea and expression ‘is to enable fair balance to be
struck between protecting the rights of the author and allowing a
literary development.
Mummery LJ, in particular emphasized that literary copyright does
not give rights that enable persons ‘to monopolise historical research
or knowledge’.
 World Cup Willie Case (2008)
The claimant’s works was the World Cup logo from 1966 comprising a
lion in an England strip kicking a football. The defendant created a
 modernized version of a lion playing football for England. Although the
defendant had copied the idea of a lion kicking a ball with its right foot,
the postures were different (one leant back, the other is forward), the
angles of the faces differed. While the stylization was similar, the High
court concluded that all that had been reproduced was ideas rather than
‘a substantial part of the original’
 Donoghue v Allied Newspapers (1938)
A 'ghost writer' wrote up the experiences of a successful jockey. It was
held that copyright was owned by the newspaper employing the
journalist who had produced the articles purportedly by the jockey, and
not the jockey, who simply recounted his experiences, but did not commit
them to writing. Farwell J stated that 'If the idea, however original, is
nothing more than an idea, and is not put into any form of words or any
form of expression such as a picture, then there is no such thing as
copyright at all'.
 Cummins v Bond (1927),
The author was actually supposed to be a ghost, the spirit of Cleophas
from the New Testament who purportedly communicated through a
medium. The pen was held by the medium who was in a trance and who
responded to prompting and questioning from the defendant who
believed himself to be in touch with dead Glastonbury monks. The court
(refraining from inquiring into the reality of the alleged spirit) held that
copyright attached to the medium who actually wrote the alleged
utterances down.
 Kenrick v Lawrence (1890),
The plaintiff sought to claim copyright in the concept of a hand filling in
a ballot paper. The plaintiff had paid an artist to execute it for campaigns
to induce illiterate people to vote. The court stated that 'mere choice of
subject can rarely, if ever, confer upon the author of the drawing an
exclusive right to represent the subject'. The court affirmed that there
could be no copyright in a banal idea. If an expressed idea was
commonplace and simple, nothing short of exact literal reproduction
would infringe the copyright in it. Similarly, if there is no other way of
expressing a certain subject, there will be no copyright capable of
protection. (A point subsequently applied in a computer software case,
Total Information Processing Systems Ltd v Daman Ltd (1992), although
since doubted.)
 Bagge v Miller (1917-23),
The plaintiff had suggested the idea for a sketch, but left it to the
defendant to compose it in a dramatic work. The court took the view that
'The mere suggestion of an idea which is embodied by another in a
dramatic work written by him does not constitute the originator of the
idea an author or a joint author of the dramatic work'.
 Wiseman v George Weidenfeld & Nicolson (1985),
The plaintiff had been a helpful critic and adviser in assisting the second
defendant to turn a novel into a play. He had not written any dialogue
 and, whatever his degree of artistic involvement, could not be said to be
a joint author. The courts have distinguished between the situations
where a person has ideas and is then commissioned to produce work,
but, in each case, a work has been made subject to contract or under
equity.
 Green v New Zealand Broadcasting Corporation (1989),
Broadcaster Hughie Green brought an action for copyright infringement
based on a television variety show he had conceived and broadcast
successfully in the UK called Opportunity Knocks. The New Zealand
Broadcasting Corporation produced their own version of the show
incorporating the same format, approach and catchphrases. Hugie
Green claimed copyright protection in the literary, dramatic format of the
show.
However, because of the skeletal nature of the scripts, simply providing
a formula for the production of a talent show contest, no copyright could
be claimed. The scripts themselves only gave guidance and it could not
be determined how the material would ultimately be presented on
screen. That would only be apparent to those who watched the
programme. The New Zealand Court of Appeal and the Privy Council
took the view that copyright could not protect a general idea. It was
stretching the meaning of coincidence to believe that the New Zealand
Broadcasting Company could have independently originated a similar
show.

General comment
 In Mirage Studios V Counter Feat (1991), the idea of aggressive humanoid
sporting turtles being the subject of copyright was reluctantly given some
endorsement, but this has not been followed and was only an interim decision.
 A distinction was made in Rees v Melville (1914) between ideas which could
not be the subject of copyright and situations and incidents in a dramatic work,
which could be. The court might, in certain circumstances, have to consider that
the mode in which the ideas were worked out and presented might constitute a
material portion of the whole play, and the court must have regard to the
dramatic value and importance of what, if anything, was taken. This would be
so even though no language was directly taken. Attempts have recurred in the
commercial and industrial world to protect, in particular, the design of products.
 However, the courts' approach has remained consistent unless evidence of the
copying of a literary or artistic work already in existence could be shown.
Other Jurisdiction
 United States of America (Level of abstraction test by Learned Hand J in
Nicholls (1930)
The seminal case in the US concerning the idea/expression dichotomy
in relation to computer programs is Computer Associated International
Inc. v. Altai Inc.60, in which the US Court for the 2ND Circuit relied upon
 a three‐step test called the abstraction, filtration and comparison test, in
order to determine the scope of the idea/expression dichotomy in the
case.
The defendant had hired a former employee of the claimant; in the course
if his work at Altai, the employee had used code owned by Computer
Associates. After finding that 30% of code written by the employee
had been taken from his previous employer, Altai provided for a clean
room rewrite of the program; however, Computer Associates sued Altai
for infringement of the copyright on the original code. Through the
development of this new test for substantial similarity, the Court held that
there was no infringement of the second version of the program.
The plaintiff was the author of a play (Abie's Irish Rose) which had been
made into a film about the contrasted love of a young Jewish man that
eventually marries an Irish catholic girl against the wishes of both their
families. The defendant had later produced a film (The Cohen’s and the
Kelly’s) whose plot was very similar to the play written by the plaintiff. In
developing his opinion, even if Learned Hand J. noted that protection of
literature cannot be limited to textual copying, he found no copyright
infringement: the ideas that had been copied were universal concepts
and stock characters.
According to this test, the movement from the expression of the idea,
wherein copyright may vest, to the idea itself, where copyright protection
does not subsist, is expressed in terms of levels of abstraction, with the
expression being less abstract and the idea being more abstract. The
approach to distilling idea from expression entails a comparison
of the works at issue. Moving from the expression to the idea, one
reaches a point where the copyright can no longer vest, and therefore
where there is no possibility the claimant’s copyright be infringed.
However, as pointed out by Learned Hand J. himself, the idea/expression
dichotomy is a distinction with an ill‐ defined boundary, and that nobody
has, of yet, been able to fix that boundary, and nobody ever can.
 Navitaire v. EasyJet Airline, the differences in the approach of the British and
American copyright laws concerning computer programs are particularly clear.
Navitaire brought an action against EasyJet and Bulletproof software
developers for infringement of the copyright in its computer software.
Previously, EasyJet had taken a licence from Navitaire's predecessor in title for
an airline booking system, OpenRes, for use in ticketless flight reservations
transactions. In its claim for copyright infringement, Navitaire maintained that
the business logic of the OpenRes system had been appropriated by the
defendants, by means of non‐ textual copying. Pumfrey J. Acknowledged that
there could be infringement in taking an idea that was sufficiently detailed but
was reluctant to find infringement in the adoption of the business logic of the
program. The Court held that the mere envisaging of an idea similar to the
object sought to be achieved by the computer program does not amount to the
appropriation of the skill and labour necessary to constitute infringement.
 The part of the judgement concerning the alleged infringement of copyright on
the OpenRes system serves as a demonstration of the difficulties arising from
 the use of the dichotomy as a reliable tool. Pumfrey J. carried out his analysis
away from the dichotomy itself (or at least not in a manner consistent with it).
Rather than referring to the idea/expression dichotomy, he argued that “the
question in the present case are both a lack of substantiality and the nature
of the skill and labour to be protected”.67 Drawing a clear‐cut distinction
between ideas and expressions as non‐protectable/protectable elements seems
unhelpful, since the boundaries of such categories are ill‐defined.
 The British approach to the idea/expression dichotomy in computer
programs has been recently confirmed in Nova Productions v. Mazooma
Games, the claimant brought two sets of proceedings for copyright
infringement concerning coin‐operated games based upon the theme of pool.
On first instance, Kitchin J. held that “ideas of a literary, dramatic or artistic
nature might be discounted as being not original, or so commonplace as to
be insubstantial. Regarding artistic copyright, the more abstract and simple the
copied idea, the less likely is to constitute a substantial part”.
 Jacob LJ. dismissed the appeal by the claimant and held that “what was found
to have inspired some aspects of the defendants' game is just too general to
amount to a substantial part of the claimant's game”.69 From the construction
of the judgement, it seems possible to infer that the reliance on the
idea/expression dichotomy was merely aimed at supporting the finding that
no substantial part had been taken and thus holding that no copyright had
been infringed. Firstly, Jacob LJ. identified the nature of the copyright work at
stake; he then dealt with the matter of whether a substantial part of it has been
reproduced in the defendants' works, and finally dealt with the idea/expression
dichotomy, in a sense that can be correctly defined as an ex post
characterization. After saying that it is necessary to distinguish between
general ideas, the mere taking of that would not amount to infringement, and
detailed ideas, whose taking could constitute infringement, Jacob LJ. analysed
whether a substantial part of the claimant's work had been copied by
the defendant and “what was found to have inspired some aspects of the
defendant's game is just too general to amount to a substantial part of the
claimant's game.
 From the structure of the judgement, it is clear that the final gloss regarding the
idea/expression dichotomy is but a seal of a reasoning which has followed a
different path to reach a conclusion of non‐infringement.