COPYRIGHT: What It Does Not Protect


        When you claim rights in copyright, whether or not registered (you should always register your copyrights.  Read “Do I Need To Register My Copyrights?”), you actually never know what rights you own to what aspects of the material claimed to be copyrighted until a court determines those rights.  An application for copyright registration almost never involves any substantive determination by the copyright office beforehand.  If the application is in proper order, the application is generally filed as a ministerial act.  So the applicant ends up with an official piece of paper.  Whether there is any legal meaning to that piece of paper, however, often remains to be seen.

        There are 2 cases that serve to point out that what you see is not necessarily what you get.

The Incredible Technologies, Inc. Case

        In Incredible Technologies, Inc. vs. Virtual Technologies, Inc. dba Global VR, these were the facts in part:

        The plaintiff, Incredible Technologies (“IT”) manufactured a video golf game, called “Golden Tee,” as a stand alone system, such as is found in taverns.  The game was very popular.  The defendant manufactured a video golf game, called PGA Tour® Golf, that was very similar to the plaintiff’s game.  The Court stated:

IT has been manufacturing the Golden Tee game since 1989 and has several copyrights on various versions of the game. Involved in this appeal are copyrights on the videogame imagery presented on the video display screen and the instructional guide presented on the control panel. In addition, there is a claim that the PGA game’s control panel infringes the Golden Tee’s trade dress.

Golden Tee employs a software program which projects images and sounds through a video screen and speakers in a kiosk-like display cabinet. The images are of players and golf courses. In front of the screen is a control panel with a “trackball” in the center, which operates the game. The “trackball” is a plastic white ball embedded on the game board. Approximately 1/4 of the ball is visible to the player. The rest of the ball is underneath the game board.

To play the game the trackball is rolled back for the golfer-player’s back swing and pushed forward to complete the swing. As in real golf, the virtual golfer must choose the club to be used and, for an accurate shot, consider things like wind and hazards (indicated on the display screen) on the course.

Aware of Golden Tee’s popularity, Global VR determined to create a game that was similar enough to Golden Tee so that players of that game could switch to its new game with little difficulty. It obtained a Golden Tee game and delivered
it to NuvoStudios (Nuvo), the firm hired to develop the new game. NuvoStudios was instructed to design a game that dropped into a Golden Tee box to work with its controls, which should correspond as closely as possible to Golden
Tee, so that a Golden Tee player could play the new game with no appreciable learning curve.

Nuvo worked from the existing software of a computer golf game—Tiger Woods Golf—and made modifications to convert from a game, played on personal computers and operated with a mouse, to an arcade game, operated as is
Golden Tee, with a trackball and buttons. Nuvo essentially copied, with some stylistic changes, the layout of buttons and instructions found on the Golden Tee control panel. Global VR terminated Nuvo’s services before the work on
the new game was completed, but it hired key Nuvo personnel to finish the job. The goal of making it easy for Golden Tee players to play the new game remained. [Emphasis added]

        The Court described both the similarities and the differences between the games of the plaintiff and the defendant.

        A litigation followed and the trial court had to decide on whether or not to issue a preliminary injunction if the plaintiff had a good chance of succeeding on the merits of its claims.  The appellate court stated:

In denying the injunction, the district court found that Global VR had access to and copied IT’s original instruction guide and the video display expressions from Golden Tee. But the court said that IT had not shown a likelihood of success on the merits of this lawsuit, in part because (1) IT’s expressions on its control panel are not dictated by creativity, but rather are simple explanations of the trackball system; at best, they are entitled to protection only from virtually identical copying; (2) the video displays contain many common aspects of the game of golf; and (3) IT’s trade dress is functional because something similar is essential to the use and play of the video game.
        The within appeal followed.  The Court stated:
Because it is pretty clear here that Global VR set out to copy the Golden Tee game, the second question comes closer to the issue we must face, and it leads us to the “ordinary observer” test: “whether the accused work is so similar to the plaintiff’s work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff’s protectible expression by taking material of substance and value.” [Emphasis added-I use the spelling “protectable” in this article]
        In other words, what was copied had to be protectable.

Ideas Are Not Protectable

        The Court stated:

In these games, an ordinary observer, seeing a golf game on the video display and a trackball to operate the game, might easily conclude that the games are so similar that the Global VR game must infringe the Golden Tee game. But
because ideas—as opposed to their expression—are not eligible for copyright protection, see Mazer v. Stein, 347 U.S. 201 (1954), protection does not extend to the game itself. Atari, 672 F.2d at 615; Chamberlin v. Uris Sales Corp., 150
F.2d 512 (2nd Cir. 1945). For other reasons, which we will soon discuss, protection does not extend to the trackball. It is clear, then, that the concept of the ordinary observer must be viewed with caution in this case, and we must heed
the principle that, despite what the ordinary observer might see, the copyright laws preclude appropriation of only those elements of the work that are protected by the copyright. Atari, 672 F.2d at 614.
Scenes a Faire Are Not Protectable

        The Court stated:

In fact, there are several specific limitations to copyright protection with some relevance to this case. One is the scènes à faire doctrine. The doctrine refers to “incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic.” These devices are not protectible by copyright. Atari, 672 F.2d at 616. For instance, the mazes, tunnels, and scoring tables in Atari’s PAC-MAN were scènes à faire.
        Read “Scenes A Faire Under Copyright Law.”

        The Court further stated:

However, Global VR argues that in this case the elements over which IT claims protection are inherent either in the idea of video golf or are common to the creation of coin-operated video games in general. The district court agreed and determined that many elements of the video display were common to the game of golf. For instance, the wind meter and club selection features were found to account for variables in real golf and so were indispensable to an accurate video representation of the game. Furthermore, the court said that the game selection features, such as the menu screens which indicate the number of players and other variables of the game, are common to the video-game format.

In presenting a realistic video golf game, one would, by definition, need golf courses, clubs, a selection menu, a golfer, a wind meter, etc. Sand traps and water hazards are a fact of life for golfers, real and virtual. The menu screens are standard to the video arcade game format, as are prompts showing the distance remaining to the hole. As such, the video display is afforded protection only from virtually identical copying.

Methods of Operation Are Not Protectable

        The Court stated:

In addition, the Copyright Act provides that copyright protection does not extend to any “method of operation . . . regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b). The Court of Appeals for the First Circuit has declined to extend copyright protection to a set of commands for a computer program. Even if there are multiple methods by which an operation can be performed, a plaintiff’s choice of a particular method of operation is not eligible for protection. Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807(1st Cir. 1995).
Useful Articles or Functional Elements Are Not Protectable

        The Court stated:

Useful articles and functional elements are also excluded from copyright protection. American Dental Ass’n v. Delta Dental Plans Ass’n, 126 F.3d 977 (7th Cir. 1997). A useful article is defined in the copyright act as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” The design of a useful article is considered a “pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101. The separability issue has caused considerable consternation. See our recent discussion in Pivot Point International, Inc. v. Charlene Products, Inc., 372 F.3d 913 (7th Cir. 2004).
        The Court explained that although some of these elements may be protectable by patent, they are not protected by the copyright law.
That means that the elements of our two games, which are most significant and most clearly similar, are not before us. The trackball system of operating the game is not subject to copyright protection. Functional features, such as
the trackball system, might, at least potentially might, be eligible for patent protection. 2 See American Dental Ass’n,126 F.3d 977. But that protection would be for a significantly shorter period of time than copyright protection. So the anomaly is that a party can conceivably obtain more significant protection for the relatively less significant aspects of its product. For instance, in this case we are concerned, not with the trackball system but with things such as whether arrows pointing to the direction a golf ball will fly are sufficiently original to merit protection under the copyright laws.
A Limited Scope Of Protectability…At Best

        The Court further stated:

The district judge here, Matthew F. Kennelly, concluded that the instructions on the control panel were not creative expressions and that there was “no evidence in the record to suggest that IT considered anything other than how best to explain its trackball system when it designed the text and instructional graphics featured on Golden Tee.” It is from this rather innocuous statement that IT says the judge created a wholly new exception. We disagree with that interpretation.
In context, it seems clear that what the judge was saying is that while there arguably are more ways than one to explain how the trackball system works, the expressions on the control panel of Golden Tee are utilitarian explanations of that system and are not sufficiently original or creative to merit copyright protection. Furthermore, the judge said, to the extent they might be subject to a copyright, they would merit protection only against virtually identical copying. [Emphasis added]

As to the instructions, we cannot say that the district judge abused his discretion in finding that the element of creativity is slight and can be protected only against identical copying, which does not exist. The element of creativity in the instructions is less than minimal. Both games use arrows to indicate the direction in which to roll the trackball in order to obtain certain results. While it is possible that something other than an arrow could have been used to indicate direction, use of an arrow is hardly imaginative or creative in this situation. Also, the designs of the arrow surrounding the trackball differ significantly in the two games as do the graphics showing shot-shaping possibilities.

        The Court also affirmed the determination of the trial court that the placement of the buttons and the trackball were dictated by functional necessities and such placement did not rise to the level of creativity required under the copyright law.

The “Trade Dress” Claim

        The Court stated:

The trade dress claim requires little discussion. The term trade dress refers to the “appearance of a product when that appearance is used to identify the producer.” Publications Int’l, Ltd. v. Landoll, Inc., 164 F.3d 337, 338 (7th Cir. 1998). To prevail on a trade dress claim, IT must establish that its trade dress is nonfunctional, that it has acquired secondary meaning, and that a likelihood of confusion exists between the trade dress of the two games. Computer Care v. Service Sys. Enters., Inc., 982 F.2d 1063 (7th Cir. 1992).
        The Court analyzed this claim and found that the elements claimed by the plaintiff to be protected by trade dress (i.e. the shape of the cabinets that housed the game and other elements) were not in fact the same on the defendant’s game.

        Read “The Protection of Trade Dress.”

The Palladium Music Case

        Perhaps an even more dramatic version of the problems of relying on copyright certificates is demonstrated in Palladium Music, Inc. vs. EatsleepMusic, Inc. et. al.

        In this case, the plaintiff was a producer and manufacturer of karaoke music tracks, which tracks were recorded as original recordings by the plaintiff.  However, the right to the underlying songs so recorded belonged to other parties.  Rights in the recordings and rights in the compositions recorded are 2 completely separate sets of rights.  Read “The Use Of Music on a Multimedia Website.”   Plaintiff had many registrations of copyright for its said recordings.

        The litigation involved claims by plaintiff that the defendants were copying the recorded music tracks of plaintiff and delivering those tracks via online distribution.  In the words of the Court:

To prove ownership of a valid copyright, Palladium presented evidence of twenty certificates of registration obtained for the musical sound recordings it has produced. (3)  Each certificate identifies Palladium as the author and lists no preexisting works or materials.  Nonetheless, defendants argued that Palladium did not own valid and enforceable copyrights in the sound recordings.  To overcome the presumption of validity created by the certificates, defendants  presented evidence that the sound recordings Palladium had registered are based upon preexisting musical compositions,(4) and that Palladium had failed to obtain either compulsory or consensual licenses from the copyright owners of those preexisting musical compositions.

The district court agreed with defendants that Palladium's sound recordings are "derivative works" of the underlying musical compositions and that such derivative works are only protected by the Copyright Act if there is lawful use of the preexisting material.  The district court found that Palladium had failed to obtain a license from the copyright owners of the underlying musical compositions as provided in 17 U.S.C. Section 115, and thus was not lawfully using the preexisting material.  As a result, the district court concluded Palladium's  copyrights were therefore invalid and unenforceable.  [Emphases added]

        The Court reviewed the definition of “derivative works” and concluded that the recordings were indeed derivative works based on the musical compositions and thus, since a party cannot create a derivative work without the consent of the copyright proprietor of the work upon which the derivative work is based, the recordings were not validly copyrighted works. (Read “Derivative Works.”)  In the case of musical compositions, the permission of the copyright proprietor of the said compositions can be obtained by either resort to the compulsory licensing provisions of the copyright act or by negotiated licenses.


        In a given instance, there can be many other parts of a work that are not protected by copyright and the foregoing should not be considered to be exhaustive of the kinds of elements that are not so protected.  You should consult with an attorney with experience in these areas of the law.

        As with many parts of the law, what you believe you have is often not what you have.

Copyright © 2005 Ivan Hoffman.  All Rights Reserved.


This article is not legal advice and is not intended as legal advice.  This article is intended to provide only general, non-specific legal information.  This article is not intended to cover all the issues related to the topic discussed.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship and is not a solicitation.




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