focus is, therefore, on the options that were available to [the plaintiff] at the time it created the [copyrighted work].” Id. Respectfully, the Court declines to rely on Oracle for this particular proposition. The Federal Circuit’s discussion is hard to reconcile with its own framing of the Second Circuit’s standard. Holding that merger doctrine requires focusing on the options available at the time of copyrightability, rather than infringement, runs counter to the Oracle court’s recognition that in the Second Circuit, “the merger doctrine relates to infringement, not copyrightability.” Id. at 1358 (describing holding of Kregos, 937 F.2d at 705).[1]
On the contrary, the Second Circuit seems to have implicitly recognized that circumstances intervening between a work’s initial fixation and the alleged copying are relevant to merger analysis. For example, in the context of computer programs, the Second Circuit cited with approval a report by an organization called CONTU for the
- ↑ As the Court understands the reasoning of ICC and Oracle, to say that merger relates to infringement rather than copyrightability largely means that merger is an affirmative defense. (See ICC Reply at 16–17.) But if that defense can turn only on considerations that relate to the time of initial copyrightability, rather than the time of the activity that may expose a defendant to liability, it is hard to see how courts are meaningfully considering merger “in the context of alleged infringement” and under the rubric of substantial similarity. Kregos, 937 F.2d at 705. Far from providing courts with “a more detailed and realistic basis for evaluating” defendants’ merger claims, see id., such reasoning requires courts to ignore potentially relevant evidence from defendants while shifting a burden of proof to them.
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