“What's in a name? That which we call a rose by any other name would smell as sweet.” – Romeo and Juliet by William Shakespeare.
The merger doctrine states that where an idea and its expression are inseparable, the courts will not grant copyright protection. Johnson Controls, Inc. v. Phoenix Control Systems, Inc., 886 F.2d 1173, 1175 (9th Cir. 1971). The Copyright Act does not expressly address the merger doctrine. See 17 U.S.C.A. §§ 101-914 (1976). Like the scenes à faire doctrine, the merger doctrine is a judicial creation of law and equity.
The most noted merger doctrine case is that of Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971). In this case, the plaintiff brought a copyright infringement claim alleging that another jeweler copied the plaintiff’s design of a jewel-encrusted pin in the shape of a bee. Id. The court noted that there were only a limited number of ways in which a jeweler could create a bee shaped pin. Id. at 741. The 9th Circuit Court held, “the ‘idea’ of a jeweled bee pin and the ‘expression’ of the ‘idea’ were inseparable, thus copying the ‘expression’ would not be barred by copyright registration.” Id. at 742. Furthermore, the substantial similarity of the two expressions of the same idea was inevitable. Id.
There is a distinction between the merger doctrine and the scenes à faire doctrine. The merger doctrine applies when the idea and the expression are inseparable. Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d 485 (9th Cir. 1984). The scenes à faire doctrine applies when substantial similarity of the expression is a natural result of the genre or common idea. Cain v. Universal Pictures Co., Inc., 47 F.Supp. 1013 (S.D. Cal. 1942). Despite this distinction, the courts often confuse scenes à faire doctrine with the merger doctrine. Both doctrines are considered an affirmative defense to a copyright claim.
Even when a court finds that a defendant fails to prove affirmative defense of scenes à faire or merger, a plaintiff must still show there is substantial similarity between the two works. In other words, it is the plaintiff’s ultimate burden of proof to prove that the alleged infringing work is as a matter of fact, substantially similar. In order to meet this substantially similar standard, the courts require a plaintiff to meet a two-pronged test: (1) a plaintiff must show that the general ideas are substantially similar using an extrinsic test; and (2) the plaintiff must show that the expression of those ideas are substantially similar using an intrinsic test. See Sid & Marty Krofft Television Productions, Inc. v. McDonald’s Corp., 562 F.2d 1157, 1163 (9th Cir. 1997).
The extrinsic test for similarity of ideas scrutinizes specific criteria which can be listed and analyzed. This extrinsic criteria may include “the type of artwork involved, the materials used, the subject matter, and the setting for the subject.” Id. at 1158. This question is usually decided as a matter of law. Id. at 1164. The intrinsic test, however, is determined by the trier of fact. Either a judge or a jury decides whether the two competing works are substantially similar enough in the expression of the idea in order to constitute infringement. The intrinsic test applies using the ordinary reasonable person standard. Id.
However, where the court recognizes that the affirmative defense of scenes à faire or merger doctrine applies, the court is in essence making a determination as to the substantial similarity of the works. The court recognizes that even though the works may be substantially similar, the scenes à faire doctrine or the merger doctrine preclude recover for infringement.