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Although these provisions have survived the press of technological change better than the narrow and specific limitations that pervade the 1976 Act, they have not been equal to the task of providing the flexibility necessary to respond to the developments that have arrived with the future.

The courts developed several general limitations on the copyright owners' bundle of rights in interpreting the 1909 Act and the copyright statutes that preceded it. Four of these court-crafted doctrines found their way into the revision bill, typically in response to particular disputes. 316 It is these more general limitations that have born the brunt of supplying the flexibility that the statute requires to adjust to technological change. The narrow disputes that engendered these doctrines' inclusion in statutory text, however, have distorted their application and limited their usefulness. Before discussing the role of these limitations in adapting to the future, I would like to describe each doctrine briefly, and explain how it came to be included in the 1976 Act.

1. Idea/Expression Distinction

The most fundamental of these court-made limitations is the idea/expression distinction. The doctrine dates back at least to the 1879 case of Baker v. Selden,317 in which the Supreme Court held that a copyright on a book describing a bookkeeping system conferred no exclusive rights in the system itself. Copyright protects only expression and not the ideas expressed." Where idea and expression are inseparable, copyright law permits others to use as much of the expression as is necessary to convey the unprotected idea.319 Similarly, copyright does not protect facts, systems, or methods, but only the form in which they are described. 320 The

316 Other limitations survived because the statute failed to overrule them expressly. See, eg., Cohen, Masking Copyright Decisionmaking: The Meaninglessness of Substantial Similarity, 20 U.C. Davis L. Rev. 719 (1987). That the statute's few general limiting principles derive from judge-made law is no accident. The legislative process that I have described is an unlikely source of broad, general limitations. If these doctrines had been born in the revision process rather than in judicial decisions, they would not have been general.

317 101 U.S. 99 (1879).

318 Eg., Peter Pan Fabrics v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960); Nichols v. Universal Pictures, 45 F.2d 119, 121 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931), see OTA REPORT, supra note 3, at 62-63.

319 Eg., Herbert Rosenthal Jewelry v. Kalpakian, 446 F.2d 738 (9th Cir. 1971); Continental Casualty v. Beardsley, 253 F.2d 702 (2d Cir.), cert. denied, 358 U.S. 816 (1958).

320 Eg., Rosemont Enterprises, v. Random House, 366 F.2d 303, 309 (2d Cir. 1966),

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1961 Register's Report began with a description of the idea/expression distinction:

Copyright does not preclude others from using the ideas or information revealed by the author's work. It pertains to the literary, musical, graphic or artistic form in which the author expresses intellectual concepts. It enables him to prevent others from reproducing his individual expression without his consent. But anyone is free to create his own expression of the same concepts, or to make practical use of them, as long as he doesn't copy the author's form of expression.

321

The revision bill that emerged from the conferences made no mention of the idea/expression distinction. In the 1967 Senate Subcommittee hearings, however, representatives of educational organizations voiced strong opposition to the broad language of the subject matter and exclusive rights provisions of the bill, on the ground that the language could be interpreted to extend protection to the functional processes embodied in computer software. 22 Educational organizations proposed a broad restatement of the idea/expression distinction;323 publishers and authors registered their opposition.324 The Senate Subcommittee drafted a more narrowly worded provision and inserted it into the section on copyrightable subject matter.25 The Subcommittee added language to

cert. denied, 385 U.S. 1009 (1967). See Denicola, Copyright in Collections of Facts: A Theory for the Protection of Nonfiction Literary Works, 81 Colum. L. Rev. 516 (1981), Ginsburg, Sabotaging and Reconstructing History: A Comment on the Scope of Copyright Protection in Works of History After Hoehling v. Universal City Studios, 29 J. COPYRIGHT Soc'y U.S.A. 647 (1982); Gorman, Fact or Fancy? The Implications for Copyright, 29 J. Copyright Soc'y 560 (1982).

321 CLR PART 1, supra note 196, at 3.

322 See 1967 Senate Hearings, supra note 210, at 196-200 (testimony of Arthur Miller, Ad Hoc Committee of Educ. Insts. and Orgs. on Copyright Law Revision); id. at 550 (testimony of Edison Montgomery, Interuniversity Communications Council); id. at 1058-59 (testimony of W. Brown Morton, Interuniversity Communications Council). 323 See id. at 1058 (testimony of W. Morton Brown, Interuniversity Communications Council). Professors Arthur Miller and Benjamin Kaplan drafted a proposed amendment to section 106:

Id.

Provided, however. That nothing in this title shall be construed to give the owner of copyright the exclusive right to any idea, process, plan or scheme embodied or described in the copyrighted work or the right to prevent the preparation of any copy or derivative work that is necessary to the use of any idea, process, plan, or scheme embodied or described in the copyrighted work as an incident of such use.

324 See id. at 1109 (written comments of American Book Publishers' Council); id. at 1155-56 (written comments of Authors' League of America).

325 See S. 543, 91st Cong., 1st Sess. § 102(b) (1969):

In no case does copyright protection for an original work of authorship extend

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the Committee Report, explaining that the purpose of the subsection was to clarify the debate over computer programs and “make clear that the expression adopted by the programmer is the copyrightable element in a computer program, and that the actual processes or methods embodied in the program are not within the scope of the copyright law.”326

2. Useful Articles Doctrine

A second longstanding doctrine, prohibiting copyright protection of utilitarian articles, also derives from Baker v. Selden.327 The Copyright Office refused to accept utilitarian articles for registration, and courts upheld the determination that utilitarian articles were ineligible for protection.328 In a 1954 decision, Mazer v. Stein, 329 the Supreme Court took some of the teeth from the limitation by holding that an otherwise copyrightable work incorporated into a utilitarian design remained copyrightable.330 As interpreted by the Copyright Office in succeeding years, the decision permitted the copyrighting of the nonutilitarian features of utilitarian articles." The Copyright Office was flooded with applications for registration of objects of industrial design with ornamental features, such as jewelry, textiles, toys, and dinnerware. 332 Meanwhile, the Register urged Congress to enact a bill giving industrial designs sui generis protection. 333

Extended discussions with industry representatives during the period preceding the copyright revision effort produced a compromise in 1957, which dictated the substance of both an ultimately unsuc

to any idea, plan, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

The provision enacted by Congress omitted the word "plan." See 17 U.S.C. § 102(b). 326 S. REP. No. 983, 93d Cong., 2d Sess. 107 (1974). See Register's Second SupPLEMENTARY REPORT, supra note 274, at 10.

327 See, e.g., Taylor Instrument v. Fawley-Brost Co., 139 F.2d 98, 100-01 (7th Cir. 1943), cert. denied, 321 U.S. 785 (1944); Amberg File & Index v. Shea Smith & Co., 82 F. 314, 315 (7th Cir. 1897).

328 See, e.g., Amberg File & Index, 82 F. at 314; Kemp & Beatley, Inc. v. Hirsch, 34 F.2d 291 (E.D.N.Y. 1929).

329 347 U.S. 201 (1954).

3.30 Id. at 214-15. See Denicola, supra note 180, at 711-17.

3.31 See CLR Part 1, supra note 196, at 12-16; Brown, Design Protection: An Overview, 34 U.C.L.A. L. Rev. 1341, 1352-53 (1987); Samuelson, Contu Revisited: The Case Against Copyright Protection for Computer Programs in Machine-Readable Form, 1984 DUKE L.J. 663, 728-36.

332 See CLR PArt 1, supra note 196, at 12.

333 See id. at 13.

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cessful sui generis design bill and the copyright revision bill's approach to protection of industrial designs. The compromise called for continuing the current level of industrial design protection under the copyright law; the Register obligingly incorporated the substance of his extant regulations on utilitarian articles into the revision bill. When the conferences produced provisions greatly broadening the scope of copyrightable subject matter and expanding the extent of exclusive rights, the Register added a provision purporting to freeze current law relative to the protection of useful articles. 335 These provisions were placed in portions of the statute applicable solely to copyright in pictorial, graphic, and sculptural works.336 Although other limitations in the statute were drafted to have general application to particular exclusive rights rather than to particular classes of works,337 the limitations on copyright in useful articles remained, by accident of placement, relevant only to pictorial, graphic, and sculptural works. 338

Both the idea/expression distinction and the useful articles doctrine are subject matter limitations on what aspects of a copyrighted work may be protected.339 By excluding ideas, facts, or utilitarian features from the realm of copyrightable subject matter, the statute puts them into the public domain, where they may be copied with impunity. The copyright in a work that is largely factual, for example, may be described as thinner than the copyright in a work that is entirely fictional. Similarly, the copyright in a functional work is thinner than the copyright in an entirely ornamental work. 340 Two additional general limiting principles made their way into the statute. In contrast to the subject matter limitations, these principles restrict the extent of the copyright owner's rights rather than the scope of copyrightable subject matter.

334 See Register's Second Supplementary Report, supra noie 274, at 194-96; CLR PART 2, supra note 6, at 189-94 (various witnesses).

335 See CLR PART 3, supra note 203, at 67 (remarks of Abraham Kaminstein, Kegister of Copyrights).

336 See 17 U.S.C. §§ 101, 113.

337 See, e.g., id. § 110. But see id. § 114(b) (limitations on exclusive rights in sound recordings).

338 See, e.g., E.F. Johnson Co. v. Uniden Corp. of Am., 623 F. Supp. 1485, 1498 (D. Minn. 1985) ("The Court cannot accept defendant's characterization of plaintiff's programs as 'a useful work.' Congress has clearly defined computer programs as 'literary works.... Accordingly, the limitations placed on the copyrightability of useful articles by section 101 of the Act are simply not applicable here.” (citations omitted)). 339 See Brown, supra note 257, at 581.

340 See, e.g., Goldstein, Infringement of Copyright in Computer Programs, 47 U. Pirr. L. REV. 1119, 1120-21 (1986).

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3.

First Sale Doctrine

The third doctrine developed by the courts is the first sale doctrine.141 Under the first sale doctrine, the copyright owner's exclusive control over the public distribution of copies of a work is exhausted, as to a particular copy of a work, upon the first authorized sale of that copy.342 It is the first sale doctrine that permits the operation of lending libraries and second hand book stores notwithstanding the copyright owner's exclusive right of distribution. Cases made clear that the first sale doctrine terminated the copyright owner's distribution right with respect to a particular copy;" the 1909 Act incorporated that principle in terms.344 It was less clear whether the first sale doctrine had any effect on the rest of the rights in the copyright bundle. 345 The majority view appeared to be that the copyright owner lost any right to display a particular copy in public along with the distribution right, but retained the rights of reproduction, adaptation, and public performance for profit. 346

343

Two controversies led to the inclusion of a modified first sale doctrine in the copyright revision bill. First, representatives of authors requested an explicit rental and lending right, which would in essence have repealed the first sale doctrine entirely.347 Second, when the Register responded to requests to redraft a proposal that embodied broader rights with specific exceptions,348 the Copyright Office draft included an express right of public display for pictorial, graphic, and sculptural works only. No display right appeared in

341 See, e.g., Samuelson, Modifying Copyrighted Software: Adjusting Copyright Doctrine to Accommodate a Technology, 28 JURIMETRICS J. 179, 195-97 (1988).

342 See, e.g., Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908); Harrison v. Maynard, Merrill & Co., 61 F. 689, 690-91 (2d Cir. 1894); Fawcett Publications v. Elliot Publishing, 46 F. Supp. 717 (S.D.N.Y. 1942).

343 See, e.g., Fawcett Publications, 46 F. Supp. at 717.

344 See 1909 Act, supra note 10, § 27.

345 See Samuelson, supra note 341, at 196-98 & n.84.

346 See, e.g., National Geographic Soc'y v. Classified Geographic, 27 F. Supp. 655 (D. Mass. 1939). One factor complicating the inquiry was the fact that during the early part of the century, music publishers licensed the right to perform music as part and parcel of the sale of copies. The purchaser of sheet music thus bought the right to perform the music publicly for profit. See Arguments on H.R. 11943 Before the House Comm. on Patents, 59th Cong., 1st Sess. 11-16 (1906), reprinted in 4 E.F. BRYLAWSKI AND A. GOLDMAN, supra note 6, at pt. F (colloquy). Another complication was the widely held, but never tested in the courts, view that fair use permitted the owner of a copy to reproduce it. See 1965 House Hearings, supra note 233, at 1497-1510 (testimony of Ralph Dwan, Minnesota Mining and Mfg. Co.).

347 See CLR PART 2, supra note 6, at 20-21 (colloquy); id. at 255-57 (written comments of Authors' League of America); id. at 313-14 (written comments of Irwin Karp). 348 See supra notes 236-48 and accompanying text.