Parts-Numbering Decisions Highlight Merger Doctrine

In the July 8, 2005 issue of the The National Law Journal, Lewis R. Clayton discusses the doctrine of "merger, where an idea and its expression are inseparable -- that is, the idea can effectively be expressed in only one way -- copyright protection will yield to the principle that ideas may not be monopolized."

In two circuit court decisions rendered over the past several months [Southco Inc. v. Kanebridge Corp., 390 F.3d 276 (3rd Cir. 2004) and ATC Distribution Group Inc. v. Whatever It Takes Transmissions & Parts Inc., 402 F.3d 700 (6th Cir. 2005)], these issues played out in the mundane context of parts-numbering systems. In both decisions -- one an en banc ruling issued over a stiff dissent -- the courts denied copyright protection, finding that "idea" merged with "expression." While the subject matter is arcane, these cases illustrate inherent tensions among basic principles of copyright law.

However, the author notes that Southco and ATC did not disturb two earlier decisions that recognized copyright claims for similar works. The 7th Circuit, in American Dental Association v. Delta Dental Plans Assoc., 126 F.3d 977 (7th Cir. 1997), upheld copyright protection for a taxonomy that classified dental procedures into groups,assigning each procedure a number as well as a description. The second circuiut in CCC Information Servs. Inc. v. Maclean Hunter Market Reports Inc., 44 F.3d 61, 69 (2d Cir. 1994), the "Automobile Red Book," which featured
projections of the values of "average" examples of used cars sold in different regions of the country, breaking out values by make, model number, body style and engine type, was protectible. The article concludes that

It is unlikely that there will ever be a clear test to separate public domain "ideas" and protectable "expression." Courts will continue to be skeptical about copyright claims based on mechanical classification systems -- particularly when copyright arguably is used to inhibit competition and receptive to the argument that creativity should be rewarded with a copyright.