Merger and Scènes à Faire: Two Defenses to Substantial Similarity in Copyright Litigation
There are various defenses defendants can invoke to avoid a finding of copyright infringement. Other than fair use, two of the most potent are the concept of scènes à faire and the doctrine of merger.
Scènes À Faire
Scènes à faire identifies material that is not copyright-protected and therefore is excluded from the substantial similarity analysis. Scènes à faire (meaning “scenes that must be done”) refers to elements that are standard, or indispensable in the type of work at issue or sequences of events that necessarily result from the choice of a setting or situation. Simply because the material has appeared in a prior work does not qualify the material as a scènes à faire. The material must occur often enough in the type of work at issue to be commonplace.
Here are some examples. In Walker v. Time Life Films, Inc., 784 F.2d 44, 50 (2d Cir.), the court held that "drunks, prostitutes, vermin and derelict cars would appear in any realistic work about ... policemen in the South Bronx" and were thus scènes à faire. In Kaplan v. The Stock Market Photo Agency, Inc., 133 F. Supp. 2d 317, 325 (S.D.N.Y. 2001), a “pinstripe suit and wing-tip shoes” was held “typical garb” in two nearly identical photos of businessmen contemplating a leap from a tall building. In Hogan v. DC Comics, 48 F. Supp. 2d 298, 310-11 (S.D.N.Y. 1999), “half-vampire and half-human” characters would found to necessarily have a "sinister genealogy," their quest for their origins “would predictably involve a struggle and ultimate choice between good and evil”, and “the use of flashback or memory is the most logical way to portray events from that character's past.” Finally, in Stromback v. New Line Cinema, 384 F.3d 283, 296 (6th Cir. 2004), the court stated that “parties, alcohol, co-eds, and wild behavior are natural elements in a story about a college fraternity.
Merger is a sliding-scale evaluation of the possibilities available for the expression of an idea. At one end of the scale is subject matter that offers wide opportunities for expression. Examples are creative works such as paintings, novels, movies and advertising/branding. For example, in Innovation Ventures, LLC v. Ultimate One Distrib. Corp., 12 Civ. 5354, 2016 WL 1273232, *12 (E.D. N.Y. March 31, 2016), plaintiff defeated merger by demonstrating that there were a number of ways it could have expressed its “5-hour ENERGY Caution" label on its drink cans.
At the other end of the scale is subject matter where the extent of protectable expression is limited. Examples are computer software and numbering cases where external factors or functional choices dictate the expression. Here where there are one or a few ways of expressing an idea, the idea and expression are said to have merged. As a result, copyright does not protect the copying of the expression. Otherwise protection would give plaintiff a monopoly over the idea. BUC Int’l Corp. v. Int’l Yacht Council Ltd., 489 F. 3d, 1129, 1143 (11th Cir. 2007), offered this example:
[I]magine the symbol often used on public signs displaying a circle with a diagonal line crossed through it. When, for example, an image of a cigarette is centered in the middle of the circle with the line through it, this visual sign expresses the idea that smoking is not allowed. This same symbol is used in a wide variety of contexts to express that something is prohibited, e.g., no swimming, no food or drink, no cell phone. Since there are effectively only a few ways of visually presenting the idea that an activity is not permitted, copyright law would not protect the expression in this case, i.e., the circle with the line through it.
The leading software case is Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992). There, the court stated that merger was the basis for its conclusion that efficient functional elements in computer programs are beyond the scope of copyright protection.
The court found merger because the computer’s modules (the expression) necessary to implement the program’s process (the idea) were constrained by a number of external and functional choices, including: (1) the mechanical specification of the computer on which a particular program is intended to run; (2) compatibility requirements of other programs with which a program is designed to operate; (3) manufacturers’ design standards; (4) efficiency demands of the industry; and (5) accepted programming practices. Id. at 709-10.Thus, because the programmer's choice of specific modules (the expression) to run the program was the result of these factors, the expression merged with the underlying idea and was unprotected. Id. at 712-15.
An example where the court applied merger in a numbering systems case is N.Y. Mercantile Exch., Inc. v. IntercontinentalExchange, Inc., 497 F.3d 109 (2d Cir. 2007). There, plaintiff alleged that defendant infringed its copyright in settlement prices plaintiff created to value customers' open positions in futures contracts. NYMEX alleged the price involved judgment and discretion; defendant alleged the price was determined by a mathematical formula. The Second Circuit sided with defendant, holding that settlement prices (the idea) must all be expressed in the same form, a number, and the possible range of that number was “exceptionally narrow.” Id. at 117. Therefore, the idea could not be distinguished from its numerical expression.
Design Case Where Choices Are Constrained by Rules or Law
Another series of cases finding merger are those where law or rules limit the expression. An example is Veeck v. S. Bldg. Code Cong. Int'l, Inc., 293 F.3d 791 (5th Cir. 2002). In that case plaintiff drafted a model building code which contained the necessary creativity to be copyrightable. A few towns then enacted those codes into law. After defendant opted to publish the law on his website, plaintiff sued for infringement. An en banc court denied relief finding merger. The court stated that, once the codes were transformed into law, they became a fact or an idea. When defendant published the text of the law, defendant was simply expressing or repeating that fact verbatim. Defendant “could not express the enacted law in any other way.” Id. at 802. Thus defendant’s website post was the “unalterable expression of the ‘idea’ that constitutes local law.” Id. at 801.
Application of These Defenses
Scènes à faire and merger are potent defenses because their application can derail an infringement case at the motion stage. Thus both sides can be expected to argue about how the idea and expression reflected in the copyrighted work should be defined.
To invoke scènes à faire, defendant will ask the court to define the idea reflected in the copyrighted work to encompass the stock or commonplace elements that necessarily follow from that idea. In contrast, plaintiff will seek to have the court define the idea at a higher level of abstraction so that the expressive elements in plaintiff’s work do not naturally flow from the idea. The definition accepted by the court may be outcome-determinative.
In sum, these defenses serve multiple purposes. On the one hand, they are beneficial because when applied, they assure the public free access to ideas and encourage competition among similar, copyrighted works. But if these defenses are applied too strictly, they may cut the incentive creators would otherwise have and need to produce creative works.
 Courts are split whether merger and scènes à faire pertain to copyrightability or are defenses to substantial similarity. This memo treats them as defenses.
 See Robert C. Osterberg & Eric C. Osterberg, Substantial Similarity in Copyright Law §§ 2:3.1 and 2:3.3 (PLI 2011).
 Andrew Berger is counsel to the firm and is also an Adjunct Professor of Copyright Law at Cornell Law School.
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