The merger doctrine and copyright in data

In the New York Law Journal:

Copyright does not protect facts, but (with a few notable exceptions such as fashion design) it protects almost any kind of creative expression even if the amount of creativity is extremely small.

The U.S. Supreme Court has held that facts are discovered, not authored, and that a “modicum” of creativity is constitutionally required before copyright protection can be triggered – even if that creativity is only in the selection and arrangement of existing facts into a new work.2

The flip side of this is the so-called “merger doctrine.” Generally, if there is only one practical way to express a given fact, the fact and its expression are said to have “merged” and the expression will not be protected. The merger doctrine is entirely judge-made and varies in its particulars from court to court, but it is a reasonably well-established part of the copyright law.

Electronic commerce, and the electronic systems that track ordinary physical commerce, tend to bring these issues to the fore. Every transaction with an electronic component, whether it is online or in the real world, generates data that is stored somewhere. Sifting and sorting that data (a process called “data mining”) can yield extremely valuable statistics about individual market participants and the markets generally. Because these statistics are commercially valuable, market operators – from eBay and Amazon to the New York Stock Exchange to Las Vegas casinos – tend to want to own them, and the copyright law is the natural place to look for support.

But last month the U.S. Court of Appeals for the Second Circuit had a chance to address these issues head-on and, although it chose a somewhat strained basis for doing so, it held decisively against copyright protection for that kind of data, despite its commercial value.

This article is dense, and the issues are complex. (He alludes to the disgusting Major League Baseball attempt to claim “ownership” in player stats, correctly decided against MLB but now on appeal.) But at least bookmark it, because if you practice IP litigation, you have a client who is, or who will soon be, trying to find a way to protect a data compilation based on some degree of creativity — or not — and, chances are, what the Second Circuit has to say about the matter, will matter.

By Ron Coleman

LIKELIHOOD OF CONFUSION blog author Ron Coleman is a member of Dhillon Law Group in their New York City and Montclair, New Jersey offices. He is a graduate of Northwestern University School of Law and Princeton University.