In Bucklew vs. Hawkins, Ash et. al., the Seventh Circuit Court of Appeals decided a case that fleshes out some of the issues related to what is or is not copyrightable.  I discussed some of these issues in “Scenes A Faire Under Copyright Law” and this case amplifies some of that discussion.

        This was the situation: Bucklew sued the defendants (collectively referred to as “HAB” in the decision) for, among other causes of action, infringement of copyright. Bucklew had developed and copyrighted certain software that was intended to be used with standard applications such as Lotus 1-2-3 and Excel and that enabled data to be displayed in certain forms used to obtain loans from the Housing and Urban Development department.  Bucklew did not claim copyright in any of the spreadsheets or in the programming that was part of the spreadsheets.  What he claimed copyright in was how his software made the forms look.  The Court summarized Bucklew’s claims as follows:

But there is more, though not a great deal more, to his product than these programs.  Decisions have to be made regarding choice and size of font, the size of cells and columns, whether and where to use color, the wording of labels and headings (other than those prescribed by the HUD forms), and whether to use boldface or italics for column headings.…Bucklew does claim copyright in the “construction” as well as display of his forms; but it is unexplained what he means by this or whether it has been infringed.
Access and Copying

        The Court initially discussed the need to demonstrate copying in order to sustain a cause of action for infringement of copyright and that the first element of copying had to be showing that the alleged infringer had “access” to the copyrighted work.  Access refers to evidence that the copyrighted work was available to the alleged infringer and that evidence can be direct or inferential.

        The Court stated:

But when the similarities concern details of such an arbitrary character that the probability that the infringer had duplicated them independently is remote, an inference of copying may be drawn without any additional evidence.
        The Court noted that mapmakers often include fictitious elements in their maps and if these elements show up in the allegedly infringing map, the inference of copying is “compelling.”  The Court noted that one of Bucklew’s forms contained a similar “copyright trap” which appeared in the allegedly infringing form.

Ah! But Is It Copyrightable?

        The defendants argued that even if there was copying, what was copied was not protectable by the copyright laws and thus there was no infringement.  The discussion of the Court thus turned to the “merger” and “scenes a faire” issues discussed in “Scenes A Faire” and indeed the Court cited to the Ets-Hokin case discussed in that article.  The Court said that merger:

refers to a situation in which there is only one feasible way of expressing an idea, so that if the expression were copyrightable it would mean that the idea was copyrightable, and ideas are not copyrightable.
        The Court noted that Bucklew was not claiming copyright in “the tabular presentation of the summary data required by HUD” and thus he was not seeking protection for the underlying idea.  Instead, the Court said:
He is claiming copyright in tables configured in an optional way, table that are the product of format choices that are not unavoidable, for which indeed there were an immense number of alternative combinations any one of which HAB was free to use in lieu of Bucklew’s.

The fact that Bucklew’s formatting choices do not reflect a high degree of originality is irrelevant.  When as in this case a work in which copyright is claimed is based on work in the public domain, the only “originality” required for the new work to be copyrightable (the very term is a misnomer) is enough expressive variation from the public domain or other existing works to enable the new work to be readily distinguished from its predecessors.

        As to scenes a faire, the Court said:
…a copyright owner can’t prove infringement by pointing to features of his work that are found in the defendant’s work as well but that are so rudimentary, commonplace, standard, or unavoidable that they do not serve to distinguish one work within a class of works from another…The presence of such elements obviously does not forfeit copyright protection of the work as a whole, but infringement cannot be found on the basis of such elements alone; it is the combination of elements, or particular novel twists give to them, that supply the minimal originality required for copyright protection.
        The Court found that, at least as to one of the forms developed by Bucklew, the formatting choices made by Bucklew were not unprotectable ideas, not “unavoidable” and not scenes a faire but that instead they were sufficiently, if minimally, original to provide the requisite copyright protection.  The Court also found that the variations in the forms introduced by the defendants were derivative works and thus themselves constituted an infringement since only the copyright proprietor has the right to create derivative works.

        As to the other 3 forms, the Court found that the copied elements did indeed fall within the above unprotectable areas.  One of the elements that was copied was in a sense a non-element.  The defendants’ form did not use a “missing vertical line.”  The Court said that

a non-existent line has no expressive content….The only element of an expressive work that is infringed by copying is an expressive element; what remains from the copying in the case of the three forms under consideration either were scene a faire or weren’t expressive elements at all.

        The Court said:

A copyright owner can sue for his losses or for the infringer’s profits, but not for the sum of the two amounts…. The copyright owner is allowed to waive damages (lost profits) and sue for the infringer’s gain….  But there is no basis in the law for requiring the infringer to give up more than his gain when it exceeds the copyright owners’ loss.  Such a requirement would add a punitive as distinct from a restitutionary element to copyright damages, and while the copyright statute does authorize statutory damages unrelated to losses or gains, see 17 U.S.C. § 504©, these were not sought here and…the statute contains no provision for punitive damages.
        [For a discussion of statutory damages and the value that that remedy provides, read “Do I Need to Register My Copyrights?”]

        The Court added:

Once the plaintiff proves his losses, or the defendant’s profits, from the defendant’s sale of an infringing work, the burden shifts to the defendant to apportion the profits or losses between the infringing and noninfringing features of the defendant’s work.
        The Court then discussed how these damages applied in the instant case but it would get into far more detail than I want to for the purposes of this article so I will not discuss those details.  However, the Court did summarize the issues thusly:
The unauthorized copying was an infringement but the only damages to which it can give rise are the price of the form, not the value of the ideas in the form because the ideas are not protected by copyright law.
        The Court also stated:
Remember that the purpose of allowing suit for the infringer’s lost profits is to make infringement worthless to the infringer.  This will sometimes require tracing those profits into another product, as where it is bundled with the infringing product.
        In this case, however, the Court found that the evidence of such “tracing” was far too speculative to be the basis for any award of damages.

        The other claims raised by the plaintiff are beyond the scope of this article.


        There are, of course, many other issues involved in copyright infringement matters and this article is certainly not intended to be exhaustive of all of those issues.

        Let me repeat what I said in “Scenes a Faire” as part of the conclusion to that article:

Writers, artists, web designers and other creators as well as publishers and other acquirers of rights take heed.  Just because you claim a copyright and even if you have filed a copyright application, this does not mean that everything as to which you claim copyright protection is in fact protected.
Copyright © 2003 Ivan Hoffman.  All Rights Reserved.


This article is not intended as legal advice and is not 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.


No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.




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