Basics of The Merger Doctrine – What it is and how it works

This post has been written by our intern, Subhiksha Murlidhar.

So, before we start…

To be eligible for a copyright, the pre-conditions are originality, creativity and expression in a tangible form. The level of creativity and originality required is not extensive. A minimal amount of creativity and originality would suffice. Copyright does not protect names, plots, ideas, concepts, factual information and works in the public domain. (You can learn more about the basics of a copyright here).

This image is shared under a Creative Commons Attribution License and is taken from the Flickr photo stream of Khalid Albaih

This image is shared under a Creative Commons Attribution License and is taken from the Flickr photo stream of Khalid Albaih

The Idea- Expression DichotomyAn idea is never the subject of a copyright, it is the expression of the idea that is. If ‘A’ has the idea of a song, this cannot be the subject of copyright. When this idea of the song is expressed in a tangible form that is in a fixed medium, it becomes eligible for copyright protection. When the lyrics are written down, when a tune is attributed to it, it becomes a musical work, eligible for copyright protection. The lyrics, composition and upon recording it, the sound recording are the components on which copyright is available. (You can read more about copyright in musical works here).

Considering copyright does not attach to an idea, but to the expression of an idea, there cannot be infringement of an idea, but only its expression. (You can read more on how ideas are not protectable here).

A landmark case explaining the idea – expression dichotomy is the case of Baker v. Seldon (101 U.S. 99). Baker sued Seldon alleging infringement of his copyright over a new system of accounting developed by him. Since the Defendant had used the idea and the bookkeeping method of the plaintiff with slight variations, the Court noted that he had expressed the idea by choosing a different expression and therefore his work did not amount to copyright infringement.

This image was shared under a Creative Commons Attribution License and is taken from the Flickr photo stream of Juan Buchelli

This image was shared under a Creative Commons Attribution License and is taken from the Flickr photo stream of Juan Buchelli

Concept of FunctionalityThe case of Mazer v. Stein (347 U.S. 201) dealt with the circumstance where the appearance of the object is partly because of its usage. In such cases can copyright exist? The Court observed that in the event an artistic work has both aesthetic and utilitarian factors, then after applying the doctrine of severability, only the aesthetic aspect of the work will be entitled to copyright protection. In this case, the parties were involved in manufacturing and selling of lamps. Although copyrighted as “piece of art’, the Plaintiff’s statuette was used as a base for table lamp. (You can read more about functionality and design here).

What is the doctrine of Merger?

When an idea can be expressed in no more than one way (or in extremely limited ways), it is barred from being a subject of copyright and thus exclusivity. When the idea and expression are so bound together, in a way that there are exceptionally limited ways of expressing it, the expression of that idea becomes uncopyrightable for that very reason. Simply put, since ideas cannot be copyrighted, the limited ways to express the idea cannot be copyrighted because the idea behind the work merges with its expression. Whether or not the Court would apply the doctrine of merger to a certain fact scenario depends on how broad the “idea” is. The doctrine of merger also counters the free speech concerns raised in discussions on copyright. This is because expression necessary to spread ideas are not permitted to be monopolized when there are extremely limited ways of expressing it.

Incidents, characters or settings which are as a practical matter indispensable or at least standard in the treatment of a given topic are said to be Scenes A Fair (a French term meaning a scene to be made). Scenes A Fair is a doctrine similar to the doctrine of merger.

Here are a few Interesting Cases:

Scrabble: Yes, the good old scrabble! The all time fun scrabble.

This image was shared under a Creative Commons Attribution License and was taken from the Flickr photo stream of martinak15

This image was shared under a Creative Commons Attribution License and was taken from the Flickr photo stream of martinak15

So what happened? In the case of Mattel, Inc. & Ors.v. Mr. Jayant Agarwalla & Orsthe Plaintiffs claimed that the Defendants infringed their copyright and trademark in “SCRABBLE” when they launched an online version of their game under the mark “SCRABULOUS” and the same was even available of Facebook. Referring to previous cases, the Court squarely agreed that the doctrine of merger is particularly applicable to games because they consist of abstract rules and play ideas. The Court also dissected the various elements in the game of scrabble as copyright and Trade Mark protection was covered under various elements such as the Rules, the name “Scrabble”, the design of the game etc. The following observation of the Court is extremely pertinent in this regard:

“By way of illustration, the arrangement of colours, values on the board, the collocation of lines, value for individual alphabetical tiles, etc have no intrinsic meaning, but for the rules. If these rules- which form the only method of expressing the underlying idea are to be subject to copyright, the idea in the game would be given monopoly: a result not intended by the lawmakers, who only wanted expression of ideas to be protected. Thus, this court concludes, prima facie, that the copyright claim of the plaintiff cannot be granted.”

What happened finally?

Internet traffic was diverted to the Defendants which resulted in commercial loss to the Plaintiffs. The Court, considering this and other factors, directed the Defendants to refrain from using the name “Scrabulous” as it was deceptively and confusingly similar to the word “Scrabble” which was a well-known Trademark of the Plaintiffs.

The Bee storyHerbert Resonthal Jewellery Corporation v Kalpakian (446 F.2d 738 (9th Cir. 1971) is one of the leading cases that explains the doctrine of merger. The Plaintiff alleged that his copyright over his pin shaped in the form of a bee, covered in jewels was violated by the Defendants. The defendants claimed that they manufactured and sold a line of jewelled bee designed on observing bees in nature. While addressing various arguments put forth by the parties, the Court referred to the doctrine of merger.

“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.”

The court reasoned that since there are only limited number of ways to make a jewelled pin that looks like a bee, any subsequent design would bear substantial resemblance to the Plaintiff’s and this would mean that one cannot manufacture such pins without infringing on Plaintiff’s copyright and that only the Plaintiff would be allowed to make pins in the shape of a bee.

Therefore the Court did not find infringement even though the products were substantially similar.

This image was shared under a Creative Commons Attribution License and was taken from the Flickr photo stream of Will Clayton

This image was shared under a Creative Commons Attribution License and was taken from the Flickr photo stream of Will Clayton

So nobody can possess copyright in “words”. But here’s something you may find amusing: The Happy Birthday song is copyrighted. It is owned and enforced by Time Warner (Warner Music).

What does this mean? Performing this in front of a substantial number of people who are not family or friends, in an open space, may amount to an infringement. It was copyrighted as early as the 1935. Ordinarily, the monopoly granted to copyright owners is for a limited period of time (60 years after the life of the author, for instance). However, in case of Happy Birthday, copyright is not due to expire until 2030. This is because of the repeated extensions sought (and granted) over the song. Movies that include Happy Birthday are required to pay a royalties.

(More about this can be found on:



If you would like to share your insights into the merger doctrine or have any questions, then do go ahead and leave us a comment or get in touch.

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