Barry KIESELSTEIN-CORD, Plaintiff-Appellant, v. ACCESSORIES BY PEARL, INC., Defendant-Appellee.
No. 1351, Docket 80-7354.
United States Court of Appeals, Second Circuit.
Argued June 19, 1980. Decided Sept. 18, 1980.
632 F.2d 989
More significantly, Manley brought with him on this social call, a very considerable amount of cash, the nocturnal transportation of which, through a high-crime area of Brooklyn seems most surprising both because it was unnecessary to his visit‘s reputed purpose and in light of his earlier assertion that he felt Brooklyn to be sufficiently dangerous as to require him to carry a gun. Manley explained that a portion of this money was to be used the following day for legitimate business expenses; however, the jury was fully entitled to reject that partial justification, particularly in light of the fact that the amount of cash Manley was carrying, according to expert testimony, was roughly equivalent to the wholesale purchase price of the quantity of cocaine found on the scale seized in the kitchen. It bears repeating in this connection that Manley was seen running from a room in which cocaine was found lying in the open, both on the scale and on the table. Cocaine is a powdery substance, soluble in liquid and otherwise easily susceptible to spoilage or unintended dispersion, and the jury could thus have properly concluded that at the time the agents made their approach to the house, Manley himself was engaged in its weighing. His attempt to conceal himself does little to bolster his claim of innocence.
Under these circumstances, we decline to reverse the jury‘s determination that Manley‘s conduct constituted a “substantial step” towards the actual possession of narcotics. We recognize that this question is always a troublesome one for both judge and jury, and it presents a particularly thorny issue when the offense being attempted is the simple possession of a substance which is easily concealed, rather than mechanically more complex crimes, such as bank robbery, which involve numerous preliminary steps uniquely criminal and generally incompatible with innocent purpose.
Despite the evidentiary difficulties inherent in establishing a criminal attempt to possess narcotics, courts have sustained verdicts where the evidence might be viewed as less compelling than the instant case. See United States v. Mandujano, supra (receipt of $650 from undercover agent in exchange for unfulfilled promise to procure narcotics held a “substantial step“). On review of the proof submitted in the case at bar, we find that the jury was justified in concluding that Manley‘s conduct was part of an attempt to possess narcotics. Indeed, it is hard to conceive of any additional preliminary steps which he could have taken short of the actual acquisition of the narcotics. In sum, the facts of this case render the likelihood of an unfair conviction minimal.
We have carefully considered the various other claims of error raised by appellants and find them to be without sufficient merit to warrant discussion.
The judgments of conviction are affirmed.
Janet P. Kane, New York City (Ronald J. Levine, Phillips, Nizer, Benjamin, Krim & Ballon, New York City, on the brief), for plaintiff-appellant.
William F. Dudine, Jr. (David R. Francescani, Darby & Darby P.C., New York City, on the brief), for defendant-appellee.
Charles R. Reeves, John C. McNett, C. David Emhardt, Woodard, Weikart, Emhardt & Naughton, Indianapolis, Ind., for LaVenta Corporation d/b/a Indiana Metal Craft as amicus curiae.
Before OAKES and VAN GRAAFEILAND, Circuit Judges, and WEINSTEIN, District Judge.*
This case is on a razor‘s edge of copyright law. It involves belt buckles, utilitarian objects which as such are not copyrightable. But these are not ordinary buckles; they are sculptured designs cast in precious metals-decorative in nature and used as jewelry is, principally for ornamentation. We say “on a razor‘s edge” because the case requires us to draw a fine line under applicable copyright law and regulations. Drawing the line in favor of the appellant designer, we uphold the copyrights granted to him by the Copyright Office and reverse the district court‘s grant of summary judgment, 489 F.Supp. 732, in favor of the appellee, the copier of appellant‘s designs.
FACTS
Appellant Barry Kieselstein-Cord designs, manufactures exclusively by handcraftsmanship, and sells fashion accessories. To produce the two buckles in issue here, the “Winchester” and the “Vaquero,” he worked from original renderings which he had conceived and sketched. He then carved by hand a waxen prototype of each of the works from which molds were made for casting the objects in gold and silver. Difficult to describe, the buckles are solid sculptured designs, in the words of district court Judge Goettel, “with rounded corners, a sculpted surface, . . . a rectangular cutout at one end for the belt attachment,” and “several surface levels.” The Vaquero gives the appearance of two curved grooves running diagonally across one corner of a modified rectangle and a third groove running across the opposite corner. On the Winchester buckle two parallel grooves cut horizontally across the center of a more tapered form, making a curving ridge which is completed by the tongue of the buckle. A smaller single curved groove flows diagonally across the corner above the tongue.
The Vaquero buckle, created in 1978, was part of a series of works that the designer testified was inspired by a book on design of the art nouveau school and the subsequent viewing of related architecture on a trip to Spain. The buckle was registered with the Copyright Office by appellant‘s counsel on March 3, 1980, with a publication date of June 1, 1978, as “jewelry,” although the appellant‘s contribution was listed on
The Winchester buckle in particular has had great success in the marketplace: more than 4,000 belts with Winchester buckles were sold from 1976 to early 1980, and in 1979 sales of the belts amounted to 95% of appellant‘s more than $300,000 in jewelry sales. A small women‘s size in silver with “double truncated triangle belt loops” sold, at the time this lawsuit commenced, at wholesale for $147.50 and a larger silver version for men sold at wholesale with loops for $662 and without loops for $465. Lighter-weight men‘s versions in silver wholesaled for $450 and $295, with and without loops respectively. The gold versions sold at wholesale from $1,200 to $6,000. A shortened version of the belt with the small Winchester buckle is sometimes worn around the neck or elsewhere on the body rather than around the waist. Sales of both buckles were made primarily in high fashion stores and jewelry stores, bringing recognition to appellant as a “designer.” This recognition included a 1979 Coty American Fashion Critics’ Award for his work in jewelry design as well as election in 1978 to the Council of Fashion Designers of America. Both the Winchester and the Vaquero buckles, donated by appellant after this lawsuit was commenced, have been accepted by the Metropolitan Museum of Art for its permanent collection.
As the court below found, appellee‘s buckles “appear to be line-for-line copies but are made of common metal rather than” precious metal. Appellee admitted to copying the Vaquero and selling its imitations, and to selling copies of the Winchester. Indeed some of the order blanks of appellee‘s customers specifically referred to “Barry K Copy,” “BK copy,” and even “Barry Kieselstein Knock-off.” Thus the only legal questions for the court below were whether the articles may be protected under the copyright statutes and, if so, whether the copyrights were adequate under the laws. Having found that the copyrights were invalid-the Winchester under the Copyright Act of 1909, and the Vaquero under the 1976 Act1-because they “fail[ed] to satisfy the test of separability and independent existence of the artistic features, which is required under both statutes,” Judge Goettel did not go on to make a conclusive determination on the further question whether the notice requirements of the acts had been met by appellant. Instead, he found that the Winchester buckle “probably” satisfies the 1909 Act notice requirements, and he reserved the question whether, with respect to the Vaquero buckle, appellant met the notice requirements of the 1976 Act by way of a saving clause that preserves a copyright despite publication without adequate notice,
DISCUSSION
We commence our discussion by noting that no claim has been made that the appellant‘s work here in question lacks originality or creativity, elements necessary for copyrighting works of art. See L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir.), cert. denied, 429 U.S. 857, 97 S.Ct. 156, 50 L.Ed.2d 135 (1976); Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951); 1 Nimmer on Copyright §§ 2.01, 2.08[B] (1980). The thrust of appellee‘s argument, as well as of the court‘s decision below, is that appellant‘s buckles are not copyrightable because they are “useful articles” with no “pictorial, graphic, or sculptural features that can be identified sepa-
Ultimately, as Professor Nimmer concludes, none of the authorities-the Mazer opinion, the old regulations, or the statute-offer any “ready answer to the line-draw-
We are left nevertheless with the problem of determining when a pictorial, graphic, or sculptural feature “can be identified separately from, and [is] capable of existing independently of, the utilitarian aspects of the article,”
Appellee argues that the belt buckles are merely useful objects, which include decorative features that serve an aesthetic as well as a utilitarian purpose. And the copyright laws, appellee points out, were never intended to nor would the Constitution permit them to protect monopolies on useful articles. But appellee goes too far by further arguing that “copyrightability cannot adhere in the ‘conceptual’ separation of an artistic element.” Brief for Defendant-Appellee at 17. This assertion flies in the face of the legislative intent as expressed in the House Report, which specifically refers to elements that “physically or conceptually, can be identified as separable from the utilitarian aspects of” a useful article. House Report at 55, [1976] U.S. Code Cong. & Admin.News at 5668.
We see in appellant‘s belt buckles conceptually separable sculptural elements, as apparently have the buckles’ wearers who have used them as ornamentation for parts of the body other than the waist. The primary ornamental aspect of the Vaquero and Winchester buckles is conceptually separable from their subsidiary utilitarian function. This conclusion is not at variance with the expressed congressional intent to distinguish copyrightable applied art and uncopyrightable industrial design, House Report at 55, [1976] U.S. Code Cong. & Admin.News at 5668. Pieces of applied art, these buckles may be considered jewelry, the form of which is subject to copyright protection, Boucher v. Du Boyes, Inc., 253 F.2d 948, 949 (2d Cir.), cert. denied, 357 U.S. 936, 78 S.Ct. 1384, 2 L.Ed.2d 155 (1958); Cynthia Designs, Inc. v. Robert Zentall, Inc., 416 F.Supp. 510, 511-12 (S.D.N.Y. 1976); Trifari, Krussman & Fishel, Inc. v. Charel Co., 134 F.Supp. 551, 552-53 (S.D.N.Y. 1955).5
Appellant‘s designs are not, as the appellee suggests in an affidavit, mere variations
We reverse the grant of summary judgment to the appellee and remand the case for consideration of whether appellant has satisfied the copyright notice requirements.
WEINSTEIN, District Judge (dissenting):
The trial judge was correct on both the law and the facts for the reasons given in his excellent opinion holding that plaintiff was not entitled to copyright protection. Kieselstein-Cord v. Accessories By Pearl, Inc., 489 F.Supp. 732 (S.D.N.Y.1980). The works sued on are, while admirable aesthetically pleasing examples of modern design, indubitably belt buckles and nothing else; their innovations of form are inseparable from the important function they serve-
helping to keep the tops of trousers at waist level.
The conclusion that affirmance is required is reached reluctantly. The result does deny protection to designers who use modern three-dimensional abstract works artfully incorporated into a functional object as an inseparable aspect of the article while granting it to those who attach their independent representational art, or even their trite gimmickry, to a useful object for purposes of enhancement. Moreover, this result enables the commercial pirates of the marketplace to appropriate for their own profit, without any cost to themselves, the works of talented designers who enrich our lives with their intuition and skill. The crass are rewarded, the artist who creates beauty is not. All of us are offended by the flagrant copying of another‘s work. This is regrettable, but it is not for this court to twist the law in order to achieve a result Congress has denied.
Both of appellant‘s designs may be described as rough geometric shapes with uneven surfaces, one of them having two wavy lines in the corner. These arrangements are embodied within a useful article-a belt buckle. They transform the ordinary square buckle-with each of its sides of equal width, and a narrow tongue attached to one side-into a four sided structure with sides of unequal thickness and the usual narrow tongue. The artist has enhanced the appearance of the buckles by rendering their shape aesthetically pleasing without interfering with function. It is the originator‘s success in completely integrating the artistic designs and the functional aspects of the buckles that preclude copyright.
Winchester
Vaquero
The 1976 Copyright Act protects only those portions of useful articles, such as belt buckles, consisting of “sculptural features that can be identified separately from, and are capable of existing independently of the utilitarian aspects of the article.” In relevant portions, the copyright law, title 17 of the United States Code, reads:
§ 101. Definitions
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“Pictorial, graphic, and sculptural works” include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, technical drawings, diagrams, and models. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.
* * * * * *
A “useful article” is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article“.
§ 102. Subject matter of copyright: In general.
(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medi-
* * * * * *
(5) pictorial, graphic, and sculptural works;
(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
(Emphasis supplied.)
The statute follows the decision of the Supreme Court in Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630, rehearing denied, 347 U.S. 949, 74 S.Ct. 637, 98 L.Ed. 1096 (1954). In Mazer, the Court held that independent works of art may be copyrighted even if they are incorporated into useful articles-“nothing in the copyright statute . . . support[s] the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration.” Id. at 218, 74 S.Ct. at 471. But the copyright protection covered only that aspect of the article that was a separately identifiable work of art independent of the useful article, in that instance a statuette used as part of a lamp.
Among recent decisions making this same distinction is Esquire v. Ringer, 591 F.2d 796 (D.C.Cir.), cert. denied, 440 U.S. 908, 99 S.Ct. 1217, 59 L.Ed.2d 456, rehearing denied, 441 U.S. 917, 99 S.Ct. 2019, 60 L.Ed.2d 389 (1979). Esquire denied copyright protection to the overall shape of a lighting fixture because of its integration of the functional aspects of the entire lighting assembly. The “overall design or configuration of a utilitarian object, even if it is determined by aesthetic as well as functional considerations, is not eligible for copyright.” Id. at 804.
While the distinction is not precise, the courts, both before and after Mazer, have tried to follow the principle of the copyright act permitting copyright to extend only to ornamental or superfluous designs contained within useful objects while denying it to artistically designed functional components of useful objects. Generally they have favored representational art as opposed to non-representation artistic forms which are embodied in, and part of the structure of, a useful article. Compare, e.g., Ted Arnold Ltd. v. Silvercraft Co., 259 F.Supp. 733 (S.D.N.Y.1966) (antique telephone used to encase a pencil sharpener copyrightable); Royalty Designs Inc. v. Thrifticheck Service Corp., 204 F.Supp. 702 (S.D.N.Y.1962) (toy banks in shape of dogs copyrightable); Scarves by Vera, Inc. v. United Merchants and Mfrs., Inc., 173 F.Supp. 625 (S.D.N.Y.1959) (designs printed upon scarves copyrightable); Syracuse China Corp. v. Stanley Roberts, Inc., 180 F.Supp. 527 (S.D.N.Y.1960) (designs on dinnerware copyrightable) with Esquire v. Ringer, 591 F.2d 796 (D.C.Cir.), cert. denied, 440 U.S. 908, 99 S.Ct. 1217, 59 L.Ed.2d 456, rehearing denied, 441 U.S. 917, 99 S.Ct. 2019, 60 L.Ed.2d 389 (1979) (copyright denied to overall design of lighting fixture); SCOA Industries, Inc. v. Famolare, Inc., 192 U.S.P.Q. 216 (S.D.N.Y.1976) (wavy lines on soles of shoes not copyrightable); Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 155 F.Supp. 932 (S.D.N.Y.1957), affirmed in part, reversed on other grounds, 260 F.2d 637 (2d Cir. 1958) (artistically designed non-representational watchface not copyrightable); Russell v. Trimfit, Inc., 428 F.Supp. 91 (E.D.Pa.1977), affirmed, 568 F.2d 770 (3d Cir. 1978) (designs of “toe socks” not copyrightable); Jack Adelman, Inc. v. Sonners & Gordon, Inc., 112 F.Supp. 187 (S.D.N.Y.1934) (picture of a dress may be copyrighted but the dress itself may not be). The relative certainty that has developed in this area of the law should not be disturbed absent some compelling development-and none has thus far been presented.
Interpretation and application of the copyright statute is facilitated by House Report No. 94-1476, U.S.Code Cong. & Admin.News 1976, p. 5658, by the Committee
In accordance with the Supreme Court‘s decision in Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954), works of “applied art” encompass all original pictorial, graphic, and sculptural works that are intended to be or have been embodied in useful articles, regardless of factors such as mass production, commercial exploitation, and the potential availability of design patent protection . . .
The Committee has added language to the definition of “pictorial, graphic, and sculptural works” in an effort to make clearer the distinction between works of applied art protectable under the bill and industrial designs not subject to copyright protection. The declaration that “pictorial, graphic, and sculptural works” include “works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned” is classic language: it is drawn from Copyright Office regulations promulgated in the 1940‘s and expressly endorsed by the Supreme Court in the Mazer case.
* * * * * *
In adopting this amendatory language, the Committee is seeking to draw as clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design. A two-dimensional painting, drawing, or graphic work is still capable of being identified as such when it is printed on or applied to utilitarian articles such as textile fabrics, wallpaper, containers, and the like. The same is true when a statue or carving is used to embellish an industrial product or, as in the Mazer case, is incorporated into a product without losing its ability to exist independently as a work of art. On the other hand, although the shape of an industrial product may be aesthetically satisfying and valuable, the Committee‘s intention is not to offer it copyright protection under the bill. Unless the shape of an automobile, airplane, ladies’ dress, food processor, television set, or any other industrial product contains some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article, the design would not be copyrighted under the bill. The test of separability and independence from “the utilitarian aspects of the article” does not depend upon the nature of the design-that is, even if the appearance of an article is determined by aesthetic (as opposed to functional) considerations, only elements, if any, which can be identified separately from the useful article as such are copyrightable. And, even if the three-dimensional design contains some such element (for example, a carving on the back of a chair or a floral relief design on silver flatware), copyright protection would extend only to that element, and would not cover the overall configuration of the utilitarian article as such.
1976 U.S.Code Cong. & Admin.News, pp. 5667-5668. (Emphasis supplied.)
Congress considered and declined to enact legislation that would have extended copyright protection to “[t]he ‘design of a useful article’ . . . including its two-dimensional or three-dimensional features of shape and surface, which make up the appearance of the article.” H.R. 2223, Title II, § 201(b)(2), 94th Cong., 1st Sess. (January 28, 1975). Passage of this provision was recommended by the Register of Copyrights, Hearings on H.R. 2223 Before the Subcomm. on Courts, Civil Liberties, and the Administration of Justice of the House Comm. on the Judiciary (Oct. 30, 1975) (testimony of Barbara Ringer), Reprinted in 16 Omnibus Copyright Revision Legislative History, 1855-59 (1975), and the United States Department of Commerce, Hearings on H.R. 2223 Before the Subcomm. on Courts, Civil Liberties and the Administration of Justice of the House Comm. on the Judiciary (May 8, 1975) (testimony and statement of Rene Tegtmeyer), Reprinted in 14 Omnibus Copyright Revision Legislative History, 161-162, 166-169. It was opposed by the Department of Justice on policy grounds. Hearings on H.R. 2223 Before the Subcomm. on Courts, Civil Liberties and the Administration of Justice
Of particular concern to this Department is the new form of copyright protection provided by title II of the bill.
This new form of protection is a hybrid between design patents,
While the protection period as proposed for the new type of ornamental design protection is only a maximum of 10 years as compared with the maximum of 14 years available for a design patent, it is granted without the need of meeting the novelty and unobviousness requirements of the patent statute.
A threshold consideration before finding that the needs are such that this new type of protection should be available is whether the benefits to the public of such protection outweigh the burdens. We believe that insufficient need has been shown to date to justify removing from the public domain and possible use by others of the rights and benefits proposed under the present bill for such ornamental designs. We believe that design patents, as are granted today, are as far as the public should go to grant exclusive rights for ornamental designs of useful articles in the absence of an adequate showing that the new protection will provide substantial benefits to the general public which outweigh removing such designs from free public use.
While it has been said that the examination procedure in the Patent Office results in serious delays in the issuance of a design patent so as to be a significant problem and damaging to “inventors” of ornamental designs of useful articles, the desirable free use of designs which do not rise to patentable invention of ornamental designs of useful articles are believed to be paramount.
If the contribution made to the public by the creation of an ornamental design of a useful article is insufficient to rise to patentable novelty, the design should not be protected by the law. The Department of Justice has consistently opposed legislation of this character.
To omit Federal statutory protection for the form of a useful object is not to deny the originator of that form any remedy whatsoever. If he can prove that competitors are passing their goods as the originator‘s by copying the product‘s design, he may bring an unfair competition action against such copyists.
Id. at 139-140. (Emphasis supplied.)
No additional testimony was received with respect to this aspect of the House bill. The Joint Senate-House Conference Committee deleted the design protection section to give further consideration to its administrative difficulties and to the benefits and burdens created by limiting the free public domain. House Report, supra, pp. 5663, 5832. The attempt to gain protection was again mounted when Representative Thomas F. Railsback introduced H.R. 4530 on June 19, 1979 to amend the Copyright Act of 1976. H.R. 4530‘s section 902 contains protections for the design of useful objects identical to those omitted from the 1976 Copyright Act. It was not adopted by Congress.
Interestingly, even if the design protection section proposed by the Department of Commerce and Representative Railsback had been passed, appellant‘s buckles might still have been excluded under the following
DESIGNS NOT SUBJECT TO PROTECTION
§ 202. Protection under this title shall not be available for a design that is-
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(e) composed of three-dimensional features of shape and surface with respect to men‘s, women‘s and children‘s apparel, including undergarments and outerwear.
(Emphasis supplied.) See also proposed § 202(b) (shape which has become common); § 202(c) (variants).
The distinctions between copyrightable “pictorial, graphic and sculptural works” and noncopyrightable industrial “designs” reflect serious concerns about the promotion of competition, the widespread availability of quality products and the advancement of technology through copying and modification. See, e. g., G. Nelson, Design, 170 (1979) (experience suggests that free copying results in more rapid development); Comment, Copyright Protection for Mass Produced, Commercial Products: A Review of the Developments Following Mazer v. Stein, 38 U.Chi. L. Rev. 807, 819-22 (1971); Note, Protection for the Artistic Aspects of Articles of Utility, 72 Harv.L.Rev. 1520, 1532-4 (1959). A similar need to balance societal interest in the availability of literary and dramatic works against the copyright holders’ interest in their exclusive enjoyment is reflected in the fair use provisions of the Copyright Act of 1976.
Important policies are obviously at stake. Should we encourage the artist and increase the compensation to the creative? Or should we allow cheap reproductions which will permit our less affluent to afford beautiful artifacts? Appellant sold the original for $600.00 and up. Defendant‘s version went for one-fiftieth of that sum.
Thus far Congress and the Supreme Court have answered in favor of commerce and the masses rather than the artists, designers and the well-to-do. Any change must be left to those higher authorities. The choices are legislative not judicial.
William CAULFIELD et al., Plaintiffs-Appellants, and Albert Shanker et al., Intervenors-Plaintiffs-Appellants, and Theodore Elsberg et al., Intervenors-Plaintiffs, v. BOARD OF EDUCATION OF the CITY OF NEW YORK, Irving Anker, Defendants-Appellees, and Joseph Califano, Jr., et al., Defendants-Appellees, and Gordon Ambach, Commissioner of Education, Defendant-Appellee, and Coalition of Concerned Black Educators, et al., Intervenors-Defendants-Appellees, and Ronald Ross, Intervenor-Defendant-Appellee.
Nos. 733, 734 and 1000, Dockets 79-6191, 79-6193 and 79-6201.
United States Court of Appeals, Second Circuit.
Argued May 21, 1980. Decided Sept. 22, 1980.