In an interesting if short decision, the Ninth Circuit Court of Appeals discussed the issues presented by this long standing copyright principle.  The loose definition of scenes a faire refers to situations in which there is essentially no other way to express a particular idea except by using certain elements and in such instances, those elements will often be termed “scenes a faire.”

        This was the situation in Ets-Hokin vs. Skyy Spirits, Inc., et. al.  Joshua Ets-Hokin was a professional photographer who took some photographs of “Skyy’s iconic blue vodka bottle.” Skyy later hired 2 additional photographers to take new photographs of the same bottle.  Ets-Hokin sued, claiming that the new photographs were infringements of his original photographs in that the said new photographs were “substantially similar” to his.  In a previous case, the Court held these photographs to contain at least sufficient originality to be copyrightable:

but noted that such protection was limited by the doctrines of merger and scenes a faire, which apply because of the narrow range of artistic expression available in the context of a commercial product shot.
        The Court went on to quote its previous decision in which it stated:
Under the merger doctrine, courts will not protect a copyrighted work from infringement if the idea underlying the work can be expressed only in one way, lest there be a monopoly on the underlying idea.  In such an instance, it is said that the work’s idea and expression “merge.”  Under the related doctrine of scenes a faire, courts will not protect a copyrighted work from infringement if the expression embodied in the work necessarily flows from a commonplace idea….
        The Court went on, in part quoting from the famous litigation between Microsoft and Apple:
Likewise, when similar features of a work are “as a practical matter indispensable, or at least standard, in the treatment of a given idea, they are treated like ideas and are therefore not protected by copyright.”
        The Court further stated:
Though the Ets-Hokin and Skyy photographs are indeed similar, their similarity is inevitable, given the shared concept, or idea, of photographing a Skyy bottle.  When we apply the limiting doctrines, subtracting the unoriginal elements, Ets-Hokin is left with only a “thin” copyright, which protects only against virtual identical copying.[citation]  As we observed in Apple, “[w]hen the range of protectable expression is narrow, the appropriate standard for illicit copying is virtual identity.”
        Finally, the Court quoted Justice Learned Hand who said:
The less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.
       The Court went on to find that the later photographs were not virtually identical, finding differences in shadows, angles and other factors.   Thus, under the above doctrines, those later photographs were not held to be infringements.


        One of the elements necessary to have a work be copyrightable is “originality.”   Generally speaking, the bar is set quite low in determining such originality.  However, where there is no other way of saying, photographing or otherwise creating an idea, the Courts prevent the monopolization of that idea through the application of the above doctrines.  Thus, while “substantial similarity” may be a basis for infringement where originality is high, in these instances a claimant has to show that the copy is virtually identical.

        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.  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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