Page:McCulloch v. Albert E. Price.pdf/5

 how large an area of activity did Congress intend to allow the copyright owner to exclude others? We think the production of jeweled bee pins is a larger private preserve than Congress intended to be set aside in the public market without a patent. A jeweled bee pin is therefore an “idea” that defendants were free to copy. Plaintiff seems to agree, for it disavows any claim that defendants cannot manufacture and sell jeweled bee pins and concedes that only plaintiff’s particular design or “expression” of the jeweled bee pin “idea” is protected under its copyright. The difficulty, as we have noted, is that on this record the “idea” and its “expression” appear to be indistinguishable. There is no greater similarity between the pins of plaintiff and defendants than is inevitable from the use of jewel-encrusted bee forms in both.

When the “idea” and its “expression” are thus inseparable, copying the “expression” will not be barred, since protecting the “expression” in such circumstances would confer a monopoly of the “idea” upon the copyright owner free of the conditions and limitations imposed by the patent law.

Id. at 742 (emphasis added). In Krofft, we further explained:

"The idea and the expression will coincide when the expression provides nothing new or additional over the idea…. [¶] When idea and expression coincide, there will be protection against nothing other than identical copying of the work…. [T]he scope of copyright protection increases with the extent expression differs from the idea."

562 F.2d at 1168.

The Krofft court provides a test for determining whether idea and expression are indistinguishable: “If, in describing how a work is expressed, the description differs little from a simple description of what the work is, then idea and expression coincide.” Id. at 1168 n. 10 (emphasis added). Put otherwise, “if a work cannot be described in abstract terms, the expression adds nothing to the idea.” ''Midway Mfg. Co. v. Bandai-America, Inc.'', 546 F.Supp. 125, 148 n. 23 (D.N.J.1982), aff’d, 775 F.2d 70 (3d Cir.1985), ''cert. denied'', – U.S. —, 106 S.Ct. 1265, 89 L.Ed.2d 574 (1986).

Lucyann Cameron, one of the co-designers of the OR? plate, testified “[t]he idea behind the plate was to honor somebody at dinner if they had done something.” This idea is expressed in a red plate with the phrase “You Are Special Today” printed around the rim of the plate. Clearly there are many other possible ways of honoring someone special at dinner. Traditionally, plaques, gold watches, and jeweled pins have also been used to express such appreciation. The idea and its expression are not unified in this case under the Krofft test.

Price, Inc. claims that the district court erred in considering the uncopyrightable phrase, “You Are Special Today,” in evaluating substantial similarity. Relying on this court’s decision in Cooling Systems, Price, Inc. argues that after discounting the uncopyrightable phrase, the ORP plate and the Price, Inc. plate “are not similar, much less substantially similar….” ORP responds that under Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir.1970), a proper analysis of this issue requires that all of the elements of the work, including the uncopyrightable text, be considered as a whole in determining copyright infringement. We agree.

In Roth Greeting Cards, both litigants were engaged in the greeting card business. 429 F.2d at 1107. Roth brought an action claiming copyright infringement of seven studio greeting cards. Id. We concluded that the textual matter of each card, considered apart from its arrangement on the cards and its association with artistic representations, was not original to Roth and therefore not copyrightable. Id. at 1109. We held, however, that textual material should be considered to determine copyright infringement even though it is not copyrightable: “[P]roper analysis of the problem requires that all elements of each card, including text, arrangement of