CITE:  199 F.3d 74
CMON:  December 1999
PLAIN: Procter & Gamble
DEFND: Colgate-Palmolive and Young & Rubicam
COURT: United States Court of Appeals for the Second Circuit
DATE:  December 7, 1999
  Appeal from the judgment of the United States District Court for the
  Southern District of New York (Robert P. Patterson, Jr., Judge) entered
  February 10, 1999, finding appellees not liable for copyright
  infringement and related claims.

  A work that is the combination of public domain elements, elements
  that can only be combined in a limited number of ways to express the
  idea of the work, is not copyrightable - the merger doctrine.

MESKILL, MINER, and PARKER, Circuit Judges.

Plaintiff-Appellant The Procter & Gamble Company ("P&G") appeals from a
judgment of the United States District Court for the Southern District
of New York (Robert P. Patterson, Jr., Judge) entered February 10, 1999,
finding, after a bench trial, that defendants-appellees Colgate-Palmolive
Company ("Colgate"), Young & Rubicam Inc., and Dentsu, Young & Rubicam
("Y&R") were not liable for copyright infringement under 17 U.S.C. Section
101 et seq. and related counts.
P&G claims error in numerous aspects of Judge Patterson's findings of fact
and conclusions of law. This opinion assumes familiarity with those
findings and conclusions. See Procter & Gamble Co. v. Colgate-Palmolive
Co., 1998 U.S. Dist. LEXIS 17773, 1998 WL 788802 (S.D.N.Y. Nov. 9, 1998).
For the reasons set forth in the discussion that follows, we affirm the
In 1994, Colgate decided to launch a new, worldwide advertising campaign to
promote its Colgate brand toothpaste. It determined to build the advertising
campaign on the theme that Colgate toothpaste protects teeth against plaque
acids that cause cavities. As development proceeded, Colgate realized that
in some countries its commercials would need to incorporate a demonstration
to educate consumers about plaque acids, their effect on teeth, and Colgate
toothpaste's ability to protect teeth from the acid.
Colgate's worldwide subsidiaries worked to develop commercials that
incorporated an effective demonstration. By June 1995, Colgate's Philippines
subsidiary had developed a concept for the demonstration that involved two
seashells. In this demo, one shell is brushed with Colgate toothpaste. Both
shells are dropped by hand into a beaker of weak acid. After a period of time,
the two shells are removed. Both shells are then scraped with dental picks
to show that the treated shell is hard whereas the untreated shell flakes.
Another demonstration developed at that time uses two eggs, and ends with
the two eggs being pressed together to show that the untreated shell is
soft whereas the treated shell is hard.
In February 1996, Colgate aired the allegedly infringing commercial in China.
The demo portion of the commercial shows a single, egg-shaped, white, cowrie
seashell being held by a human hand. The shell contains a black line which
divides it into halves lengthwise. One half is marked with a red "C".  A
toothbrush brushes toothpaste onto the "C" half. No rinsing is shown,
but the next scene depicts the shell without the toothpaste on it. The
shell is shown being held in wire tongs and dipped into a glass beaker
of clear acid. Next, the shell, no longer in the beaker, appears on a
flat surface. A dental mirror taps the untreated half, knocking out a
small hole in the shell. The mirror then taps the treated "C" half,
which does not crack.
In May 1996, Colgate reshot the demo. As of the time of trial, only
commercials with the reshot demo were airing in China. In the reshot demo,
the shell is divided in half widthwise, which permits the entire word
"Colgate" to be written on the treated half rather than only the single
letter "C".  A glass bowl is used instead of a beaker. The actual removal
of the shell from the acid is shown. And, a smaller hole is created by
the tapping.
The development of Colgate's seashell demo, and its evolution from the
1995 demos to the demo that was ultimately incorporated into the China
commercial, are discussed at length in Judge Patterson's findings and
will not be repeated here. Witnesses from Colgate and Y&R described an
extensive development campaign and the numerous decisions made by a
variety of individuals over the course of that campaign. The two people
responsible for filming the seashell demo, Edward Pollack and David Deahl,
provided a detailed account of the filming process and the choices they
made to arrive at the finished product.
It is undisputed that individual elements of the Colgate seashell demo
derived from public domain science experiments dating to the 1960s.
In various combinations, the public domain experiments show that eggs
treated with fluoride resist the decaying effects of acid, whereas
untreated proxies do not. For example, a 1983 United Kingdom publication
describes a "Toothpaste Eggs" experiment for school children.  The
experiment starts with squeezing toothpaste out of the tube and then
dipping half an egg into the toothpaste. The untreated half is marked
with a cross and the toothpaste is then removed from the treated side.
The egg is placed in a glass container containing acid. Bubbles appear on
the untreated half of the egg, whereas the treated half remains free of
bubbles. This illustrates that the toothpaste protects the shell from
acid attack.
It is similarly undisputed that as early as 1970 Colgate had been developing
demos similar to the public domain experiments. For example, in 1970
Colgate's advertising agency developed a demo which, as Judge Patterson
      involved using a toothbrush to brush half of an egg with
      toothpaste, soaking the egg in a beaker of acid, removing the
      egg, and then tapping both the treated and untreated halves
      of the egg with a dental instrument or a pencil.
      Procter & Gamble, 1998 WL 788802 at *7.
On seeing Colgate's China commercial, P&G, which manufactures Crest brand
toothpaste, concluded that appellees had created their seashell demo by
copying a similar demonstration that used an egg ("egg demo"), which P&G had
incorporated in Crest commercials beginning in 1989. P&G sued for copyright
infringement of five copyrighted egg demos, namely P&G's original egg demo
that P&G published in Chile in 1989 and four substantially similar demos
that aired later. P&G did not claim that the commercials as a whole
infringed, but only that the demonstration portion did, i.e., that
Colgate's 1996 seashell demo infringed P&G's 1989 egg demo.

Specifically, P&G alleged that nine elements from Colgate's seashell demo
were copied from P&G's egg demo and infringed P&G's copyrights: (1) the 
use of an egg-shaped, white proxy for a tooth; (2) the use of a close-up
shot showing only the hand holding the shell, with no other body parts
shown; (3) a black line dividing the shell into two halves; (4) a mark on
one half of the shell; (5) a toothbrush brushing toothpaste onto the
marked half; (6) placing the shell with wire tongs into a glass beaker
filled with a clear acid solution; (7) removing the shell from the acid;
(8) tapping each half with a metal rod; and, (9) showing the visual effect
that the untreated half was weakened whereas the treated half remained
strong. Given that public domain experiments predated the commercials,
P&G's claim was not that any of those individual elements was protected
or had been individually infringed; rather, P&G posited that the
compilation of the elements in the demo was protected by copyright,
that the compilation had been copied, and that the copying constituted
"Copyright infringement is established when the owner of a valid copyright
demonstrates unauthorized copying.".  Repp v. Webber, 132 F.3d 882, 889
(2d Cir. 1997), cert. denied, 525 U.S. 815, 142 L. Ed. 2d 40, 119 S. Ct.
52 (1998). Actual copying must be shown, either by direct or indirect
evidence. See id. Indirect copying may be shown by demonstrating that
the defendant had access to the copyrighted work and that the similarities
between the works are probative of copying. See id. If the plaintiff
establishes a prima facie case of infringement, the defendant may rebut
it by proving the affirmative defense of independent creation. In
analyzing this affirmative defense, the fact-finder must be mindful that
"subconscious" or "innocent" copying is still copying. Id.
In this case, Judge Patterson found against P&G on every element. He found
that the egg demo was not validly copyrighted because it was not original
and creative. Assuming validity, he found no copying. Assuming evidence of
indirect copying, he found that appellees had nevertheless independently 
created the seashell demo, {n1} and, at any rate, that the works were not
substantially similar so as to make the copying unlawful. Moreover, he
found an entirely independent ground to deny relief. He found that P&G's
first publication of the egg demo in Chile in 1989 was a general publication
without notice, and that such publication put the egg demo into the public
domain. Based on this, Judge Patterson found that the Chilean version of
the egg demo, and the remaining four copyrighted egg demos derived from
the Chilean version, were not protectable.  Procter & Gamble, 1998 WL 788802,
at *37-55.

The only issue we address on appeal is Judge Patterson's finding on
independent creation. Because this analysis resolves the appeal, we need
not express an opinion as to the remainder of Judge Patterson's analysis.
Instead, we assume (without deciding) that P&G's egg demo did not enter
the public domain in 1989, and that P&G proved a prima facie case of
infringement. With these assumptions in place, we proceed to analyze
Judge Patterson's treatment of the affirmative defense of independent
Judge Patterson found: "The evidence of independent creation in this case
overwhelms the evidence of access and probative similarity. . . . Any
inference of copying is negated by the significant evidence of independent
creation, and the likelihood that similarities between the parties' works
are the product of conventions in the field of television commercials."
Procter & Gamble, 1998 WL 788802, at *52-53. Judge Patterson also noted
that, "The specific executional elements in the defendants' egg
demonstration that P&G claims were copied do not demonstrate copying
because they merely apply conventional methods of portraying the experiment
in a television advertising format." Id. at *53.
In essence, Judge Patterson credited defense witnesses who stated that
there was no conscious copying, and concluded that the similarity between
P&G's egg demo and Colgate's seashell demo was attributable to the fact
that both derive from public domain experiments and are further governed
by basic conventions of the advertising industry. In so doing, Judge
Patterson rejected the available inference that P&G's egg demo exerted
a subconscious effect on Colgate and Y&R such that they copied without
knowing it. Unsurprisingly, P&G does not contend that Judge Patterson's
fact-finding was clearly erroneous.
Instead, P&G argues that Judge Patterson erred when he relied on evidence
of advertising conventions to conclude that appellees independently created
their demo. According to P&G, that reliance is "just another way of
removing P&G's work from copyright protection via the scenes a faire
doctrine." See Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693,
715 (2d Cir. 1992) (scenes a faire are unprotectable elements that follow
naturally from the work's theme rather than from the author's creativity).
P&G is incorrect. The fact that elements (or the combination of elements)
of a work display the minimum creativity necessary to avoid the scenes a
faire label for purposes of protectability does not eliminate the fact
that those elements may be readily susceptible to independent creation.
The less creative the choice, the stronger the inference that the same
choice or group of choices made by another was made independently. See id.
at 708-09 ("The fact that two programs contain the same efficient structure
may as likely lead to an inference of independent creation as it does to
one of copying. . . . Evidence of similarly efficient structure is not
particularly probative of copying."); cf.  Matthew Bender & Co. v. West
Publishing Co., 158 F.3d 674, 682-83 (2d Cir. 1998) (creativity in selection
and arrangement is a function of the total number of options available;
external factors that limit the viability of certain options and render
others non-creative; and, prior uses that render certain selections
"garden variety"), cert. denied, 526 U.S. 1154, 143 L. Ed. 2d 1048,
119 S. Ct. 2039 (1999).
In this case, the creativity (if any) at issue consisted largely of selecting
elements from the public domain to express a specific idea (that fluoride
protects teeth against acid attack) in the most efficient way possible. Given
the model of the public domain experiments, and the relatively restrictive
medium of the television commercial, only so many choices existed. As Judge
Patterson recognized, this circumstance strengthened the inference that
similarities between the egg and seashell demos were attributable to
independent creation rather than copying.

We have considered P&G's remaining arguments on the issue of independent
creation and find them to be without merit. Accordingly, we affirm the
judgment of the district court.


{n1} Judge Patterson collapsed the test for independent creation into the test
for indirect copying, in effect finding that there was no indirect copying
because similarities were attributable not to copying but to independent
creation.  Procter & Gamble, 1998 WL 788802 at *52-53.  P&G does not argue
that Judge Patterson's method was error.