*1 sup- trial. The conviction on continued to ed for new tors, would not have who using practice he fraud count is affirmed. they had known law mail him port in- private their contributions some of personal purposes. and other
vestments to defraud to a claimed scheme
As elections, there no indica- board
state known us had the board that
tion before expendi- about the nature
the truth willing able it been
tures would have any action. As corrective
take the contribu- scheme to defraud INC., claimed CAROL BARNHART tors, evidence to establish there scant Plaintiff-Appellant, expecta- entertained the that contributors govern- attributed to them tions CORPORATION, ECONOMY COVER witness, former one Pisani’s ment. While Defendant-Appellee. he partner, testified that had contribut- law expected funds campaign Pisani’s ed to Docket 84-7867. spent cam- money of Appeals, United States Court testified expenses, four others who paign Second Circuit. they expected their contribu- how about agreed did not to be used all tions Argued June 1985. political them Pisani used care whether Sept. Decided any purposes. Nor was there personal political con- any of Pisani’s evidence ever or heard about the con-
tributors saw filed of the disclosure statements he
tents the board of elections. event, think shift in we government’s
theory emphasis in the far comes too late to sustain Pisani’s
case
campaign fund mail fraud convictions. We
need not now decide mail fraud whether a
charge might misleading be based con reports through
tributors false of cam
paign expenditures, fund because that government brought the case
against Pisani to the jury. and tried Since government uphold has failed to
legal premise of the fraudulent scheme on Pisani, namely, chose prosecute personal campaign use of funds was law,
prohibited under York the cam New fund
paign mail fraud convictions must be
dismissed.
Conclusion campaign on the fund convictions reversed, fraud are those
mail counts indictment are dismissed.
counts
The convictions on income tax counts reversed, and those counts are remand- *2 MANSFIELD, MESKILL and
Before NEWMAN, Judges. Circuit MANSFIELD, Judge: Circuit (“Barnhart”), Carol Barnhart Inc. which stores, display department sells forms to distributors, stores, ap- and small retail peals judgment from a Dis- Eastern York, Wexler, of New Leonard D. trict. granting summary Judge, a motion for judgment Economy made defendant Corporation (“Economy”), Cover which variety display products a wide sells primarily jobbers to and distributors. alleges complaint Economy Barnhart’s infringed engaged has its competition by offering unfair for sale dis- play copied original forms from four “sculptural forms” which Barnhart copyright. Judge grant- holds Wexler Economy’s for summary judg- ed motion ground plaintiff’s ment manne- quins partial human torsos used dis- clothing play articles of are utilitarian arti- separable containing cles works of copyrightable. thus are af-We firm.
The bones of contention are four human Barnhart, designed by forms torso each of life-size, neck, arms, which without or a back, expandable styr- and made of white president ene. Plaintiff’s created the using buttons, clay, forms develop mold, fabric an initial which she then used to build an aluminum into mold poly-styrene poured manu- sculptural display facture the form. There upper male are two and two female torsos. One each of the and female male torsos purpose displaying unclad shirts sweaters, while other two sculpted with for displaying shirts sweat- forms, and'jackets. All the ers which are Pokotilow, Steven City B. New York anatomically otherwise life-like and accu- (Blum Kaplan Friedman, Silberman & Ber- rate, designed have hollow to hold backs an, Goldbard, Laura Yeung, E. Anita K. garment fabric when the fitted excess New City, counsel), York plaintiff- advertising the form. onto Barnhart’s appellant. items stresses forms’ uses Bierman, (Eu- City blouses, Jordan B. sweaters, shirts, New York dress Jr., Bierman, V. gene Handy, Bierman & come “[pjackaged and states that Peroff, counsel), City, easy shipping New York boxes for UPS-size and [are] multiples sold in of twelve.” defendant-appellee. Then, forms, granted day. tration the same the first of the created
Plaintiff Shirt, founding shortly after its in on Barnhart informed Econo- Men’s October March, 1982, July it by the end of had Easy Pin Forms my that its Shell violated By $18,000 De- worth orders. attracted rights and demanded it dis- Barnhart’s designed had all four plaintiff cember advertising and sale of continue *3 morning forms, during first of the and 1983, more 18 forms. In November than by the twice-yearly sponsored show trade selling form, Barn- months after its first Display of the Indus- National Association copyright its that hart advised customers $35,- (“NADI”), placed try customers had “inadvertently notice had omitted” [been] the forms. Plaintiff’s 000 in orders for display previously from forms distrib- that favorable re- president maintains bearing adhesive stickers uted and enclosed merchandisers, Barn- sponse visual notice, which it asked the cus- customers, primary “convinced me hart’s products tomers to affix unmarked purchased not my being forms were that inventory. their artisti- only for their function but for filed this suit December Barnhart sculptured features.” cally charges Economy I vio- 1983. Count with range Economy, sells which its wide under, Copy- lating rights Barnhart’s distributors, primarily jobbers, products (1982), by right Act, 101-810 17 U.S.C. §§ stores, national chain retail and selling display copying Barnhart’s four and stores, in early first learned 1983 that Economy II has alleges that forms. Count selling its forms display di- Barnhart was engaged competition under the in unfair observing After that no rectly to retailers. of the State of New York. common law appeared either on Barn- copyright notice adjudication seeks that complaint promotional forms or in its litera- hart’s copy- infringed Barnhart’s Economy has ture, produced Economy contracted to have injunc- permanent and rights, preliminary conceded, it four forms has for for it against Economy’s producing, adver- tion motion, summary judgment of its purposes (conse- forms, damages tising, selling its “copied display from Barnhart’s were statutory, at- punitive), quential, “substantially similar to forms” for torney’s Economy fees. moved summa- Economy display Barnhart’s forms.” be- copyright- of the ry judgment on issue Pin gan marketing product, “Easy Shell (and forms ability of Barnhart’s Forms,” in September 1983. Later attorney’s statutory damages and issue of month, Barnhart to NADI to same wrote fees). selling complain Economy exact that 1984, 3, hearing February on After a duplicates sculptural of Barnhart’s forms opinion order and stop Judge issued an Wexler price at a lower and asked it to 12, granting defend- Economy September 1984 duplication underselling. re- on judgment summary letter for sponded with a from its counsel dat- ant’s motion 17, F.Supp. 1983 to the Chairman of 594 364 copyrightability. ed October issue stating (E.D.N.Y.1984). rejected Ethics Committee that court NADI’s district Economy guilty was not “under- plaintiff’s arguments that issue practices handed” business since Barn- improper subject was an by “patent, protected hart’s forms were not Copy- judgment summary trademark, or copyright, otherwise.” right issuance of certificates of Office’s four cre- registration for Barnhart’s forms 17, (October 1983) On the same date presumption ated an insurmountable registration applied Barnhart central validity copyrights. of the On the including products, a number of copyrightability, issue of reviewed forms issue here. It identified each four language, legislative history, and statutory “sculpture” sought of the forms authority, concluding recent case applications expedited examination of its voice,” i.e., speak “a that a single all possibility litigation over because only to Copyright regis- copyrighted copyright infringement. article 414 “there physically prove is a forced in the instance extent first all of
conceptually separable work art embell- the multitude of facts underline ishing Applying Id. at 370. it....” validity de- unless the test, court determined that the district fendant, them, by effectively challenging possessed since the forms Barnhart no doing plain- shifts burden of so to the exist, aesthetic features could either tiff.” physically conceptually, separate 1476, H.Rep. Cong., 94th 2d Sess. articles, they the forms as utilitarian were reprinted Cong. in 1976 Ad. U.S.Code & copyrightable. 5659, 5773. News See also Oboler v. Gol- 6, 1985, F.Supp. On March (2d din, Cir.1983); F.2d M. Judge Wexler denied Barnhart’s motion for Nimmer, 12.11[B], Nimmer on § reargument. present appeal followed. (1985). at 12-79 to 12-80 *4 Judge properly Wexler exercised Discussion the discretion on him by conferred 17 Appellant’s argument, threshold 410(c). U.S.C. re Once defendant’s § ignoring the district court erred in the sponse plaintiff’s put to claim in issue statutory presumption validity accorded the whether four Barnhart forms were to a copyright registration certificate of copyrightable, correctly he reasoned that and to line-drawing expertise the of the testimony” the “mute put the forms him Office, Copyright can disposed be of brief good position in as Copyright the ly. respect prima With validity facie to Office decide ex the issue. While the Copyright determinations, Office 17 pertise of Copyright the Office is in “inter 410(c) U.S.C. states: § pretation of application the and its to law any judicial “In proceedings the certifi- presented facts by copyright the the appli registration cate of a made before or cation,” Industries, Norris Inc. v. I.T. & within years five after publication first T., (11th 918, Cir.), 696 F.2d 922 cert. de of the work prima shall constitute facie —nied, -, U.S. 104 78 S.Ct. validity copyright evidence of the of the (1983), permissible L.Ed.2d 89 it is for the and of the facts stated in the certificate. district court itsélf to consider how the evidentiary weight to be accorded copyright applies to law the articles under the registration certificate of a made consideration.1 thereafter shall be within the discretion of the court.” Since the four Barnhart forms are con- However, registration “a certificate of cre cededly articles, the crucial issue ates presumption no of copy irrebuttable determining their is wheth- right Industries, validity.” Durham Inc. they possess er artistic or aesthetic fea- (2d v. Tomy 630 Corp., F.2d 908 Cir. physically tures are or conceptually 1980). Extending a presumption validity separable from their utilitarian dimension. to a registration of copyright certificate A “useful article” is defined 17 U.S.C.
“merely proof. having orders burdens 101 as “an article an intrinsic § plaintiff ordinarily should not be utilitarian function merely to Appellant's provide copyright notice, publication failure to notice without and a reason- until 18 months after initial distribution of its effort copies able is made add notice to to all forms is not to 17 phonorecords fatal its claim. U.S.C. or that are distributed to the 405(a)(2) provides: § public in the United States after the omission discovered; copyright pre- has been or "The of the ...." omission notice argument through cop- appellant scribed 401 At oral sections counsel for main- phonorecords publicly ies of president distributed tained that Barnhart's had no made authority copyright does not owner affirmative decision her forms rather, invalidate very in a work if— beginning; she later dis- ****** remedy covered steps this omission took and "(2) previous corresponding purchasers registration has been work made the forms. years before or is made within five after dangerous undertaking “It be appearance of the article would portray persons only to the Although 17 trained law to convey information.” U.S.C. final,judges 102(a)(5) protection constitute themselves extends § illustrations, works,” pictorial worth outside of sculptural graphic, “pictorial, obvious limits. “pictorial, graphic, and the narrowest most definition of works,” pro- gen- extreme At the one some works of sculptural at U.S.C. § appreciation. sure design of ius would be to miss a useful article vides novelty make very Their them re- would pictorial, graphic, be “shall considered public pulsive had learned the until only if, only, sculptural their language new which author that, design incorporates extent spoke. doubted, It be more than sculptural pictorial, graphic, or features instance, etchings Goya whether from, separately can identified paintings of Manet would have existing independently capable been sure of when seen for of, aspects of the the utilitarian article.” end, At copy- time. the other first interpret scope applicability To right pictures denied to language, to which it extent appealed public ato less educated than as the may protect useful articles such four 251-52, judge.” at Id. S.Ct. forms, legis- must turn to the Barnhart we 300-01. Act, Copyright the 1976 history lative expanded Act of 1909 which is informative. *5 scope copyright protect statute to authority Congress, acting under the arts, traditional fine but also 8, Constitution, I, cl. 8 of the extend- Art. § art; “[wjorks of designs models or for copyright protection to ed three-dimension- 1909, works Copyright of art.” Act of ch. Act Copyright of art in the al works 320, 1075, (codified 5(g), 35 Stat. 1077 at § 1870, copyrightable subject which defined (1976)),reprinted 17 1-216 U.S.C. 4in §§ as:
.matter
Nimmer, supra,
6,
M.
App.
at 6-5. How
chart,
book,
“any
map,
dramatic or musi-
ever,
language
narrowly interpret
was
composition,
cut,
engraving,
print,
cal
by Copyright
regulations
ed
Office
issued
thereof,
negative
photograph
or of a
1910,
in
part:
stated in
which
chromo, statue,
painting, drawing,
statu-
“Works
art. —This term
all
includes
ary, and of models or designs intended to
belonging
works
fairly
so-called
perfected as works of
be
arts____”
fine
drawings,
(Paintings,
fine arts.
and
8,
July
1870,
230,
Act. of
ch.
sculpture).
86,
198, 212 (repealed 1916).
16 Stat.
§
“Productions
the industrial arts uti-
Supreme
upheld
expansive
The
Court
purpose
in
character
litarian
and
are
reading
“writings”
of “authors” and
in
subject
copyright registration,
if
to
even
Lithographic
Burrow-Giles
Co. v. Sarony,
artistically
Copy-
made or ornamented."
53, 60,
279, 282,
111 U.S.
4 S.Ct.
28 L.Ed.
Office,
right
Regulations
Rules
and
(1884), rejecting the
349
claim
Con-
Registration
Copyright,
to
Claims
gress
authority
lacked the constitutional
to
(1910), 8; reprinted
Bulletin No. 15
copyright protection
extend
photographs
201,
23,
Stein,
Mazer
212 n.
v.
347 U.S.
negatives
thereof. The Court further
460,
23,
74
467 n.
Justice Holmes stated “anti-dis- In “Works Gen- famous — class principle: crimination” eral This includes works of artis- 416 craftsmanship, implemented so far as their
tic form Office Maz- not their mechanical or utilitarian regula- but by promulgating er v. Stein new concerned, such aspects are as artistic Act, interpreting 5(g) tions of the 1909 § enamels, glassware, tapes- jewelry, which part: stated in tries, belonging as well as all works “(c) If the sole intrinsic of an function arts, as paintings, drawings the fine utility, article is its the fact sculpture.” (1949), C.F.R. 37 202.8 § shaped unique attractively article is Stein, reprinted supra, in Mazer v. 347 qualify will not it as a art. work of 212-13, S.Ct. U.S. at at 467-68. However, shape a utilitarian regulation While this seemed to expand features, article ar- incorporates such as art, coverage applied for works of it did not sculpture, carving, pictorial rep- tistic explicitly copyright protection in- extend resentation, sepa- can be which Mentified design objects. dustrial rately capable m. inde- existing significant step The next historical pendently work of as a such features by Congress but Supreme taken not eligible registration.” will be Stein, Court in its 1954decision Mazer v. 202.10(c) ((1959), C.F.R. as amended § upheld supra, proper where it 202.8 as a § (revoked 18, 1959) 1978), June reprinted determining standard for when a work of Nimmer, App. in M. applied art is entitled protec- 11-13, (1985). to 11-14 tion, of deciding in the context whether provide an effort some form of lamps which used statuettes of male and protection to “three-dimensional dancing figures female made of semivitre- such,” articles number copyrightable. ous china as were bases separate design were into bills introduced question faced narrow was whether (Willis Bill), Congress. See, e.g., H.R. 8873 lamp the addition of the attachments de- Cong., July 23, 1957, 85th 1st S. Sess. prived the copyright pro- statuettes Bill), (O’Mahoney-Wiley-Hart 86th tection to separately were enti- Cong., May 28, Finally, 1st Sess. tled. question The Court answered *6 passed by Title II of a holding bill the Senate negative, the that an ornamental 1975, (The Design design S.22 Protection Act of necessarily does not cease to be 1975), proposed legal protection artistic when embodied a useful to offer to article may and copyright designs therefore entitled to the creators of ornamental of use- protection. 214, Id. at 74 ful “pictorial, graphic, S.Ct. at 468. articles.2 It defined 2.,- law, Report description sign patent affording protection The Senate offered this of while to purpose: Title II’s designs, proved adequate protect some has to designs proposed only purpose legislation, those whose have life "The short as amended, encourage expectancy. orig- is to the creation of designs present copyright inal equally ornamental of useful "The articles statute is protecting designs inappropriate protection the authors of such for the for of such de- against copying. signs. limited copyright protection time unauthorized The of is too term The to long majority designs. scope title is offer the intended creator of for the of The of broad, designs of copyright protection ornamental useful articles a new is too while the special form problems registration requirements of directed toward the notice and do field, Also, arising design design protection. the and is fit the needs the of existing copyright protects designs intended only to avoid the defects of the law those copyright design patent by pro- separately and statutes which can be identified as 'works secured, easily viding simple, and effective of art.’ or, design protection period years, the of 5 "Because of the limitations of de- both the renewed, laws, period years, sign if appro- patent legislation of 10 under and this priate safeguards proposes conditions. protec- and a new to establish form of designs presently protected by ‘original designs are tion for ornamental ."Such of useful 35, design patents subject under title issued United articles.' matter The of the bill is Code, articles, requirements States meet the if of limited to of useful the term design patent ‘design’ referring title 35. A not be to issued those features of the use- give until a search been made to has determine ful article to it an intended ornamental design possesses novelty. that such appearance. protection provided by The de- this The
417 pictorial, graphic, be considered “include shall two-di- sculptural works” if, only only sculptural works of and three-dimensional mensional design incorporates photographs, the extent that such fine, graphic, applied sculptural maps, globes, pictorial, graphic, or features reproductions, prints and from, charts, diagrams, separately and models.” that can be identified plans, existing capable independently House, however, responded pass- The of, aspects the article.” strikingly version. To.the different ing a it added the passed clauses were from work text Senate Both the added following: Copyright Office: first from its 202.8, Regulation approved by the of artis- § include works works shall “Such Stein; in Mazer v. Supreme the sec- as their form Court craftsmanship insofar
tic
post-Mazer
202.10(c).3
from its
or utilitarian
ond
their
§
mechanical
but
finally
entirely
enacted
concerned;
bill
omitted
aspects are
section,
proposed Title II.4
article,
in this
as defined
1476,
55,
article,
H.R.Rep.
No.
begin
a useful
as such.”
legislation
when
would
Cong. &
design,
public,
1976 U.S.Code
Ad.News at 5668.
bearing
made
is
renewed,
or,
One commentator has stated:
years.” S.Rep.
last for 5
subjected virtually
“The
text thus
473,
(1975).
amended
Cong.,
161-62
1st Sess.
94th
seeking copyright protection
all industrial art
separability
Report
explanation
this
under Title I to
criterion of
3. The House
offered
n .. This doctrine
102(a)(5)..
sections 101 and
change in definition:
separability
could then authorize the denial
amendatory language,
adopting
this
"In
modern,
functional de-
seeking
draw as clear a line
Committee
Reichman,
signs____”
Design
Protection
copyrightable
possible
between
works
Foreign Copyright
Domestic and
Law: From
works
applied
uncopyrighted
art and
of indus-
Revision of 1948 to the
Berne
painting,
design. A
trial
two-dimensional
1143,
Duke L.J.
Act
capable
drawing,
graphic work is still
printed
being
when it
identified as such
Report explained
deletion as
4. The House
applied
articles such as textile
to utilitarian
follows:
containers,
fabrics, wallpaper,
and the like.
Judiciary
reporting
“In
S.
the House
carving
statute or
same is true when a
deleted Title II.
Committee has
designs
Until
or,
product
used to embellish an industrial
generally
useful articles were not
case,
incorporated
prod-
into a
in Mazer
subject
protection.
primary
ability
indepen-
losing
to exist
uct without
design patent,
protection available was the
hand,
dently
On the other
as a work of art.
requires
that the
be not
which
‘original’,
law,
product
although
shape
an industrial
applied
the standard
valuable,
satisfying
aesthetically
‘novel’,meaning
never
but also
that it has
not to
Committee’s intention is
offer
anywhere.
before existed
copyright protection
bill. Unless
under the
“However,
Supreme
Court de-
in 1954
automobile, airplane,
shape
ladies’
Stein,
cided
case of
347 U.S.
Mazer
*7
set,
dress,
any
processor,
food
television
or
630],
L.Ed.
in which it held
[74 S.Ct.
product contains some ele-
other industrial
incorporated
of art which are
into
that works
that,
conceptually,
physically
be
can
ment
articles,
design
useful
but which are
the
capable
separable
as
from the utilitarian
identified
standing
by
as art
themselves
article,
design
aspects
would
be
article,
of that
not
separate from the
are
works
sepa-
test
copyrighted
bill. The
under the
example
copyrightable. The
used in Maz-
rability
'the
independence
and
from
utilitari-
lamp
er case
an ornamental
base.
was
depend
not
aspects of
article’ does
an
passed by
S. 22 as
the Senate
"Title II of
is,
design
if
upon
nature
even
copyright
a new limited form of
would create
—that
by
appearance
is determined
‘original’ designs
of an article
protection
which are
functional)
(as
article,
opposed to
considera-
clearly part
regardless
esthetic
of a useful
elements,
tions,
any,
only
be
designs
by
if
which can
could
them:
whether such
selves,
stand
separately
the useful article as
separate
from the
Thus
identified
article itself.
And,
copyrightable.
designs
even
articles
do not meet
such
of useful
which
‘novelty’
design patent
contains some such
standard
three-dimensional
(for
carving
protected.
example, a
back
for the first time
element
on silver
“S.
is a
bill.
or a floral relief
revision
of a chair
part
flatware),
delete
copyright protection would
chose to
Title II in
extend
Committee
element,
design protection
new form of
would not cover the
because the
to that
truly
provided
II could
be con-
configuration
Title
not
the utilitarian article
over-all
history
legislative
Appellant
thus con
seeks
to rebut
conclusion
that,
while
has
by arguing
firms
that
represent
the four forms
to cover
increasingly been extended
articles
expression
particular idea,
concrete
of a
dimension, Congress
having a utilitarian
blouse,
e.g., the
of a
idea
woman’s
and that
copyright protection
refused
explicitly
has
involved,
torso,
the form
a human
is tradi-
applied art or industrial de
for works of
tionally copyrightable.
suggests
Appellant
have aesthetic or artistic
sign
fea
that since the Barnhart forms fall within
separately
be identified
tures that cannot
category
sculpture
traditional
article. Such works are
from the useful
body, they
subjected
human
should be
to a
regardless of the
copyrightable
fact
of scrutiny
determining
lower level
its
“aesthetically
they
satisfying
that
copyrightability.
disagree.
We
We find
H.R.Rep.
and valuable.”
no
support
statutory
language or
Cong.
at
U.S.Code
& Ad.News at
legislative history
merely
for the claim that
5668.
because a utilitarian article falls within a
principles,
Applying these
we are
traditional art form it
entitled
to a lower
persuaded
since
the aesthetic
ar
scrutiny
determining
level of
copy-
tistic features
Barnhart forms are
rightability. Recognition of such a claim
inseparable from the
use as
forms’
utilitari
any
would in
event conflict with the anti-
copyrightable.
forms are
articles the
principle
discrimination
Justice Holmes
clay
Appellant emphasizes
sculpting,
enunciated
Bleistein v. Donaldson Li-
sculpture,
often
in traditional
used
Co.,
thographing
supra,
sidered ap- outweigh and therefore its benefits will the disadvan- propriately scope tage removing within the pub- revi- from free sion. lic use. addition, "In Title II left unanswered at “The issues raised II Title have not been *8 by least two fundamental which Copyright issues will re- resolved its deletion the quire study by Congress. Therefore, further the These Revision Bill. the Committee be- first, agency are: what necessary should administer this lieves that it will be to reconsider and, second, design protection system new question design protection legis- the of in new given typeface protec- during should be Congress. the lation the first session 95th tions hearings of the title? complete At that time more on the "Finally, and, may the subject Committee have will to exam- be held without the encum- Department general bill, ine further the assertion of the of brance of a revision the Justice, opposition which testified in to the issues S. 22 raised Title II of be re- Title, monop- that Title II a H.R.Rep. would create new solved.” at oly by justified showing Cong. which has not been a 1976 U.S.Code & Ad.News at 5663. function, its must concluding the buckles were utilitarian some two have In the fact copyrightable' we relied on configuration of the chest and some width aspect of the primary shoulders, ornamental of a belt serve buckle can its “[t]he concep- is Vaquero and Winchester buckles satisfactorily function without orna- subsidiary utili- tually from their separable type of mentation the renders the Id. glance at A at tarian function.” Kieselstein-Cord buckles distinctive.5 buckles, reproduced^ of pictures the the two of judgment The the district court is at id. 995, coupled description in with the affirmed. text, highly their ornamental the confirms distin- separability. What dimensions the buckles from Barnhart guishes those NEWMAN, Judge, JON O. Circuit dis- ornamented surfaces of forms is that the senting: any respect re- were not the buckles interesting This case concerns the functions; the quired by their utilitarian though “conceptual esoteric issue sepa- features could thus artistic and aesthetic rability” under the Act of 1976. to, having of as been added be conceived I the majority Because believe has either an utilitari- superimposed upon, otherwise the misunderstood nature this issue or unique an article. artistic applied resolving an incorrect standard in performance of wholly unnecessary to the case, respectfully the I issue dissent function. the case the utilitarian judgment affirming from the the District hand, forms, the on other the Barnhart grant summary judgment Court’s for artistic, claimed to be aesthetic features grant I summary the defendant. would configuration e.g., the life-size the judgment plaintiff as to two the shoulders, the width the
breasts question objects in and remand for trial of inextricably the intertwined with utilitarian disputed feature, issues of fact as the other display of two the clothes. Whereas a torso, objects question. of a human order to serve model Newman, colleague, Judge including engine, depending automobile 5. Our learned would an on copyrightability displayed. a have of utilitarian article turn how it inspection the illusory suggested on "whether visual article and nature of the standard pertinent consideration of all evidence would by Judge by sugges- his Newman confirmed [ordinary] engender in the observer’s mind a mannequins might qual- some tion that under it separate non-utilitarian that can dis- ify copyrightable sculptures as whereas others place, temporarily, least the utilitarian as- not, factors, might depending on numerous in- 423). pect.” p. (Dissenting Op. difficulty used, cluding angular configu- the material yardstick proposal as with this is that it uses its limbs, figures and ration of the the facial a so ethereal as amount to a standard "non- Indeed, uncertainty as hair. his to whether the difficult, extremely test” that would be impossible, not styrene mannequin with a chests clothed shirt apply. to administer or Whether a ordinary by or blouse could be viewed ob- object temporarily could be con- only server as art serves to underscore bot- require as a would ceived of a by pit that would be created such a tomless vague investigation ways judicial into in which it However, regardless which test. stan- might displayed and on occasion have been applied disagree proposition dard is we with the might expert displays. It extent of the involve here, mannequins as when viewed hol- evidence, survey testimony and kind some as (as present- lowed-Out three dimensional forms distinguished upon judge from reliance as copyright) distinguished ed two-di- ordinary observer. by photographs, could be viewed mensional any utilitarian article be viewed Almost ordinary anything other than ob- observer by separately depending how some it jects' having function as manne- a utilitarian (e.g., Campbell Soup displayed can of concealing quins. by open, It would be pair wall of of- ornate scissors affixed object, rear half of the which is hollowed-out art). object, it is museum of modern But pinning obviously designed to or tuck- facilitate display, not the form of garments, sculp- in of that an illusion of sought. Congress has made rea (as ture can created. In that case object sonably clear that dissent) subject photos relied on ordinary should turn on use as viewed presented as that same observer, average temporary flight *9 copyright. object, fancy could utilitarian attach 420 issue this case is whether the issue of
The ultimate
becomes whether the
eligible
objects
copyright pro-
four
are
useful
“sculptural
these
have
fea-
articles
objects are
forms of
tection. The
molded
tures that can
separately
be identified
life-size,
a
styrene. Each is
three-dimen-
from, and
capable
existing
are
of
indepen-
of
representation
sional
the front of the
of,
dently
aspects”
utilitarian
males,
are
of
Two
chests
human chest.
¿forms.
of
chests
females. For each
and two are
This elusive standard was somewhat
represents
chest,
gender,
form
a
one
nude
by
Report
clarified
accompany
House
represents a
and one form
chest clad with a
ing the bill
that became
1976
Act.
shirt or a blouse.
Report states that the article must contain
102(a)(5)
copy-
of the Act extends
Section
that,
concep
“some element
physically works,”
right
“sculptural
protection
tually, can be
separable
identified as
which are defined
include “three-dimen-
aspects
the utilitarian
of that article.”
fine, graphic,
applied
of
sional works
H.R.Rep.
1476,
Cong.,
55,
94th
2d Sess.
craftsmanship
art”
artistic
and “works
reprinted in
Cong.
1976 U.S.Code
Ad.&
insofar as their form but not their mechani-
added).
5668 (emphasis
News
In this Cir
aspects
cal
or utilitarian
concerned.”
settled,
is
cuit it
majority
and the
does
(1982).
17
101
U.S.C.
The definition
§
dispute, that “conceptual separability” is
“sculptural
special
contains a
limit-
works”
“physical
and,
distinct from
separability”
“useful
provision for
articles”:
present,
when
entitles
creator of use
a
design
article,
of a
as defined
copyright
ful article to a
on
design.
See
section,
shall be
a
considered
...
Pearl,
Kieselstein-Cord
v. Accessories
only if,
sculptural
(2d
Inc.,
989,
632 F.2d
Cir.1980);
993
see
that,
design incorporates
extent
...
also Trans-World Manufacturing Corp. v.
sculptural features that can
identified
Inc.,
Nyman
Sons,
95,
Al
&
95 F.R.D.
from,
separately
capable
and are
of exist-
(D.Del.1982);
Esquire,
98-99
see
but
v.
Inc.
of,
ing independently
the utilitarian as-
796,
(D.C.Cir.1978),
591
Ringer,
F.2d
803-04
pects of the article.
denied,
908,
rt.
440 U.S.
99 S.Ct.
ce
Id. Each
the four
forms in-this case is
1217,
(1979)
59 L.Ed.2d
(arguably
456
re
indisputably a “useful article”
that term
jecting
independent
force of “conceptu
Act,
is
defined
section 101 of the
17
separability”).
al
(1982),
U.S.C. 101
since each
the “in-
has
§
serving
carefully
trinsic
function”
must
as a What
considered
is
means
displaying clothing
meaning
application
and accesso-
of the principle ries
Thus,
“conceptual
customers
retail
separability.”1
stores.
Initially,
principle
"conceptual
separability”
engenders
design
concept
functional.
If the
a
design
functional
elements
separable
law
from the
of the utilitari-
function,
distinguished
should be
design
from the
copyrightable.
somewhat sim
That
principle
“functionality"
developed
ilar
special creativity
is a reward for the
shown
design
designer
trademark law. A
feature
not serve
comparable
of such an article. No
43(a)
protected by
as a trademark
protection
section
is warranted under
law
trademark
Act,
1125(a) (1982),
product
Lanham
15 U.S.C. §
if it is
since
marketer of the
with function-
Laboratories,
design
functional.
Inwood
Inc.
Ives
al
features has available innumerable
Laboratories, Inc.,
features,
456 U.S.
ways,
design
S.Ct.
other
102
than these
to iden-
(1982); LeSportsac,
72
tify
L.Ed.2d 606
Inc.
goods.
v. K
source of his
He
use
(2d Cir.1985);
Corp.,
Mart
421 design sculpture of of the point able a life-size obvious helpful to make the be something principle body must mean this human should lose that “physical separability.” That than other man- mannequin protection simply because numer- by the is illustrated principle latter it, replicate cheap it copy in ufacturers or- examples objects of useful ous familiar materials, quantities in large to sell sculp- carving, a drawing, a by a namented department display clothing. stores to embel- other decorative any figure, ted suggested approach, A somewhat related apart physically appear could lishment Judge in by opinion a Oakes’ sentence article. Professor Nimmer from the useful Kieselstein-Cord, uphold copy- to the is sculptured jag- example the of the offers right, the decorative aestheti- whenever provides of adorns the hood uar that cally pleasing aspect of the article can be auto- well-known British the name the “primary” the said to be utilitarian 1 on mobile. See Nimmer “subsidiary.” can said to be function be (1985).. all of the at 2-96.1 With § 2.08[B] phys- approach apparently at This of F.2d 993. elements the automobile utilitarian removed, concept, the em- ically frequency the indeed focus- of does not on bodiment, the artistic creation of the Since usage and non-utilitarian the belt “conceptual remain. jaguar would Since frequently case were used buckles “physical the as separability” same is frequently less to belts and used as fasten be obvious that separability,” it should also jewelry displayed pieces of ornamental “conceptually sepa- can be design a feature than the waist. various-locations other aspect a use- from the utilitarian rable” approach is of- difficulty that it separated if it be ful article even cannot fact, to guidance fers little the trier physically.2 judge endeavoring determine wheth- the ways possible in which There are several exists, er a triable issue of fact as what might under- “conceptual separability” be being is measured the classifications usage. An One concerns article stood. “subsidiary.” “primary” and primarily used to serve its utilitarian func- related to the approach, Another also regarded “concep- might lacking tion as first, Nimmer, suggested by Professor tually separable” design elements even “conceptual separability argues that' who design those rendered it though elements likeli- substantial exists where there secondarily solely usable as an artistic had hood even if the article no utilitari- danger approach There in this work. still be marketable some an use it would deny copyright protection that it would community sim- significant segment designs displayed by works a qualities.” 1 ply of its aesthetic because minority also because used a (foot- Nimmer, copyright- supra, at 2-96.2 majority as useful articles. § 2.08[B] so, nal). arguable serving displaying but also chest the This it is molded function of dancing functioning clothes, figure, though as precise of the four base, really to the utilitarian is not essential in this forms lawsuit. functioning lamp; only wiring, (which wiring enclosing hollow metal stem principle contends that Professor Nimmer presumably figurine), was encased in the "conceptual separability” is illustrated socket, bulb, nec- bulb and the switch were deemed entitled to v. Mazer object essary to function a enable Stein, U.S. 74 S.Ct. L.Ed. 630 figure, though lamp. dancing described in decision, (1954). well-known the Su- base, may really opinion have been no preme upheld Court for the stem, more than decorative enclosure for the figures lamp. dancing used the base of a capable physical separation from the func- "physical separability," a case of This cannot be lamp. Since tional elements of Mazer maintains, ”[p]hysi- Professor Nimmer because principle Stein was decided before the of "con- cal removal of all utilitarian features ceptual separability” explicitly identified as base,” lamp must include removal of its criterion "hardly sculptured dancer in- leave article, surprising it is not that the Court’s Nimmer, tact since the dancer the base.” 1 opinion be- does not illuminate distinction origi- (emphasis at 2-96.1 § 2.08[B] "physical” “conceptual” separability. tween *11 omitted). approach allegedly infringing This “market” whether an bears note work similarity a allowing copyright only copyrighted a to substantial to a risks See, work. popular e.g., the Herbert Jewel- forms within domain Rosenthal Co., ry Corp. v. F.2d acknowledges. Jewelry Nimmer Honora hazard Professor (2d However, Cir.1974); Nimmer, supra, 13.- sculp- various at 2-96.3. § id. See course, 03[E], the ordinary Of recognized observer as works of ted forms would be actually issue; does not decide the the trier by many, though willing even those to of fact determines the issue in light the display in them for their homes purchase impressions reasonably expected to be might “signifi- in and not a be few number upon hypothetical made ordinary the ob- community.” segment of the cant And, server. as with other issues decided suggest might “conceptual Some by reference the ordinary to reactions of an design separability” exists whenever observer, particular may present case appeal form has aesthetic sufficient to be undisputed facts which a reasonable qualities. for its artistic appreciated That conclusion, only trier could reach one rejected plainly by approach has been Con- which event by the side favored that con- Report gress. The House makes clear prevail clusion is entitled as a matter of that, if the artistic features cannot be iden- summary law and judgment have entered separately, is copyright- tified the work See, in its favor. e.g., Kieselstein-Cord though even able features are “aes- Pearl, Inc., Accessories by supra (copy- qnd thetically satisfying valuable.” H.R. right proprietor prevails on issue of “con- at Rep. 1976 U.S.Code ceptual separability” law). as a matter of Cong. & Ad.News at 5668. A may chair be “separateness” utilitarian designed artistically as to so merit concepts non-utilitarian engendered by an museum, ain but that fact alone cannot design article’s is itself a perplexing con- satisfy “conceptual the test of separate- cept. requisite I think “separateness” ness.” The viewer the museum sees and design exists whenever the creates in the well-designed apprehends chair, not a ordinary mind of the observer differ- two work of art with a conceptu- that is concepts ent inevitably enter- ally separate from purposes the functional simultaneously. Again, example tained object people of an on which sit. artistically designed displayed chair How, then, “conceptual separateness” in a may helpful. ordinary museum be my view, be determined? In the answer expected observer can apprehend be derives from the “conceptual.” word For design of a object chair whenever the features be “conceptually addition, may, viewed. He entertain separate” from aspects the utilitarian art, but, concept of a work if this second the useful article that design, embodies the concept engendered the observer’s article must stimulate in the mind of simultaneously concept mind with the concept the beholder a separate function, requi- article’s utilitarian concept from the evoked its utilitarian “separateness” site does not exist. The function. The may test turns what rea- test is not whether the observer fails to sonably be understood to be occurring in recognize object as a chair but or, the mind of the beholder as might some concept whether the of the utilitarian func- say, in the eye” “mind’s of the beholder. displaced tion can be in the mind some requires This formulation consideration of occur, concept. other That does not at who beholder is and when a concept ordinary observer, least for the when view- may “separate.” be considered ing artistically designed even the most I think the relevant beholder occur, must however, chair. It when view- legal personage that most useful object ordi- some other if the utilitarian func- —the nary, observer. reasonable This is object perceived all; tion of the is not person same occur, law enlists to decide other also even when the conceptual law, observation, issues in perceived by per- such as function is concept inquiry of art. The need explanation, if the haps aided nature displaced regrettable, inquiry.is can be since courts the utilitarian function he entertains the mind while in art the observer’s must not become of taste arbiters non-utilitarian separate concept of some aspect aesthetics. How- other separate will nor- function. ever, long separability” “conceptual mally of art. that of design of a determines whether the copyrightable, some threshold as- article is requisite sepa- might that the Some think *12 sepa- since sessment of art is inevitable the concepts whenever the rability of exists concept satisfy will the test of rate that mind of design engenders of a form the the “conceptual separability” will often be ordinary any concept that is the observer course, courts concept of a work of art. Of concept of the form’s from the distinct art, the a approach, quality must not assess but function. Under utilitarian artistically designed design engen- chair a design an determination of whether the art, if the copyright protection concept separate the of a would receive ders enter- ordinary viewing would concept observer of an article’s utilitarian from the art in addition concept of a work of function, tain the necessarily requires some consid- approach, That I concept of a chair. object whether the is a work of eration of fear, Congressional the ef- would subvert art. deny copyright protection designs fort to the determining Both the trier factual aesthetically that are of useful articles “conceptual separability” the issue impression an pleasing. The aesthetical- deciding undisputed judge whether the pleasing design ly would be characterized permit a reasonable trier to reach facts many impression of a work of as enti- only one conclusion on the issue are art, thereby blurring Congress the line has might tled to consider whatever evidence I sought to maintain. believe we would be issue, in helpful on the addition to Congressional scheme more faithful to the gained impressions visual from article concept, such as that if we insisted that a Thus, question. object the fact that an art, “separate” a from the of work of apart or displayed has been used from function concept of an article’s utilitarian function, the extent of such dis- utilitarian concept non-utilitarian can when the use, play whether ordinary in the mind of the be entertained purchases would all be use resulted the same contem- observer without at time design determining whether the relevant This tem- plating the utilitarian function. separable concept engenders a object permits separateness poral sense of addition, expert opin- In of art. of a work enjoy articles to some useful survey ought generally to evidence ion protection, provided by on The issue need turn be received. Act, according protection but avoids ordinary ob- the immediate reaction of the appreciated every design can be inspection of visual server but whether Congress rejected. a work of a result perti- of all the article consideration truly sepa- function utilitarian engender ob- nent evidence would concept “conceptual purposes rate separate non-utilitarian server’s mind a design engenders separateness” unless displace, tempo- concept can at least concept without at a non-utilitarian concept. rarily, the utilitarian concept engendering time of a same function. approach This seems consistent with explain the few cases to have even endeavoring In draw the line between issue, although lan- considered aesthetically pleasing design an use- all of the not be guage in decisions article, copyrightable, ful which is not Kieselstein-Cord, entirely reconcilable. design copyrightable of useful article upheld of the artis- concept we engenders separate from the This hold- function, design tic of two belt buckles. courts concept of its utilitarian upon into some minimal was based a conclusion inevitably be drawn will 42 4 law, conceptually sep- was engender the buckles no sepa- was the utilitarian of fas-
arate from
function
rabie
the utilitarian
function
each
view,
turn,
evidently
thought
That
was
article.
It
tening,. a belt.
that an
part
undisputed
ordinary
on the
fact that
viewing
based in
the articles
observer
frequency
conception
with some
wore the
have in mind
separate
consumers
no
jewelry
(Norris)
ornamental
at locations
from that of wheel
buckles as
cover
apparent-
lighting
(Esquire).
other than
waist.
Court
fixture
ly
that the buckles had created
concluded
involving
styrene
case
the four
chest
Qur
concep-
in the minds of those consumers a
forms seems to me a much
case
easier
than
jewelry
tion
as ornamental
observer,
ordinary
An
Kieselstein-Cord.
separate
aspect
from the functional
of a
indeed,
ordinary
opinion
reader of this
Expert testimony supported
belt buckle.
depict-
wh0 views the two unclothed forms
that the buckles rise
view
to the level
jnecj
figures
below,
1 and 2
would be most
of creative art.
Of entitlement As for depicted the two in figures below, on the the unclothed of chests clothed with a give only limited, though blouse, forms would shirt or a I am uncertain what valuable, protection. apparently copy- concept concepts engendered bar right design- would not imitators from in the ordinary mind observer. likely I think it is these forms concept separable too no *15 engender the separately would entertained their utilitarian function. concept of art object or whether I grant summary judgment to the engendered also aof man copyright proprietor nequin. But this is not the conclusion two nude forms and remand for trial a reasonable trier reach could as to the respect to the two clothed forms. perception of an ordinary observer. That might always observer perceive them as
mannequins perhaps as devices advertis particular style sale the of shirt or sculpted
blouse on each form. I think a
reasonable trier could conclude way either
on the issue “conceptual separability”
to the clothed forms. That issue is there
fore not summary judgment amenable to should, my view, be remanded for event, In
trial. I agree do not that the
only reasonable conclusion trier of fact
could reach is that the clothed forms create always concepts engendered If the style itself, sculpted the mind shirt blouse these ordinary anof not, observer were that of a manne- utilitarian functions would in the absence quin top sweaters or separable accessories on concept, support some hlouse, shirt or of a form to advertise the in the of the clothed forms.