Kay Berry Inc v. Taylor Gifts Inc

Opinions of the United
2005 Decisions States Court of Appeals
for the Third Circuit

8-30-2005

Kay Berry Inc v. Taylor Gifts Inc
Precedential or Non-Precedential: Precedential

Docket No. 04-3809

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 PRECEDENTIAL

UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
___________

NO. 04-3809
___________

KAY BERRY, INC.

Appellant
v.

TAYLOR GIFTS, INC.;
BANDWAGON, INC.

___________

On Appeal from the United States District Court
for the Western District of Pennsylvania
(Civil No. 03-1305)
District Judge: Honorable Donetta W. Ambrose
___________

Argued May 3, 2005

BEFORE: McKEE, VAN ANTWERPEN and WEIS, Circuit
Judges

(Filed: August 30, 2005)
Andrew B. Katz (Argued)
Fox, Rothschild, O’Brien & Frankel, LLP
2000 Market Street
10 th Floor
Philadelphia, PA 19103

William L. Stang
Fox, Rothschild, O’Brien & Frankel, LLP
625 Liberty Avenue
29th Floor
Pittsburgh, PA 15222

Counsel for Appellant

William E. Hilton (Argued)
Gauthier & Connors, LLP
225 Franklin Street
Suite 3300
Boston, MA 02110

John R. McGinley, Jr.
Eckert, Seamans, Cherin & Mellot, LLC
600 Grant Street
44th Floor
Pittsburgh, PA 15219

Counsel for Appellees

2
 ___________

OPINION
___________

VAN ANTWERPEN, Circuit Judge

Before us is an appeal from an order granting summary
judgment in favor of the defendant-Appellees on a copyright
infringement claim. Appellant Kay Berry, Inc. (“Kay Berry”)
claims that Appellees Taylor Gifts, Inc. (“Taylor”) and
Bandwagon, Inc. (“Bandwagon”) infringed its copyright on
its sculptural work – a garden rock cast with a poem found in
the public domain. The United States District Court for the
Western District of Pennsylvania granted summary judgment
after determining that Kay Berry’s copyright registration was
invalid and that the sculptural work was not entitled to
copyright protection. We will reverse.

I. FACTUAL BACKGROUND AND PROCEDURAL
HISTORY

Kay Berry designs, manufactures, markets and sells
“Garden Accent Rocks,” which it describes as decorative,
cement-cast, outdoor sculptures typically resembling rocks or
stones, inscribed with writings. On July 7, 1997, Kay Berry
applied for a copyright registration for its entire line of
Garden Accent Rocks. It provided its Garden Accent Rock
Catalog (the “Catalog”) as the document specimen for the
registration. The Catalog identified each sculpture by
number and featured a description and photograph of each

3
individual work. The United States Copyright Office issued
Kay Berry a Copyright Registration Certificate (the
“Certificate”) with an effective date of July 1, 1997. The
Certificate identified the scope of the Certificate’s subject
matter as simply “[s]culptural works with design and text.”

One of Kay Berry’s best-selling Garden Accent Rocks
is Sculpture No. 646, a rectangular object having a stone-like
appearance and a verse inscribed on the face. The verse
appears in five lines, inscribed in a right-leaning font with the
first letter of each word capitalized:

If Tears Could Build A

Stairway, And Memories

A Lane, I’d Walk Right Up

To Heaven And Bring

You Home Again

(Appellant App. at 8.)

During 2003, Bandwagon began supplying to Taylor,
and Taylor began marketing and selling, a “Memory Stone,”
which was similar to Kay Berry’s Sculpture No. 646. Like
Sculpture No. 646, the Memory Stone was a rectangular
object with a stone-like appearance featuring the exact same
verse that appears on Sculpture No. 646. The Memory
Stone’s verse was also laid out in the same five-line format,

4
each word also began with a capital letter, and the entire verse
also appeared in a right-leaning font.

Kay Berry sued Taylor and Bandwagon for copyright
infringement and moved for a preliminary injunction
prohibiting the Appellees from selling the Memory Stone. On
December 8, 2003, a United States Magistrate Judge issued a
Report and Recommendation suggesting that the District
Court deny Kay Berry’s motion. The District Court adopted
the Magistrate’s Report and Recommendation, without
change, in an order dated February 23, 2004.

At about the same time, on February 6, 2004,
Appellees had filed an amended motion for summary
judgment on the infringement claim. On August 2, 2004, the
Magistrate issued a Report and Recommendation suggesting
that the District Court grant the motion. On August 30, 2004,
the District Court adopted the Magistrate Judge’s Report and
Recommendation as its own opinion and granted summary
judgment in favor of Appellees. This timely appeal followed.

II. JURISDICTION AND STANDARD OF REVIEW

The District Court had jurisdiction pursuant to 28
U.S.C. §§ 1331 and 1338(a). This Court has jurisdiction
pursuant to 28 U.S.C. § 1291. We exercise plenary review
over the District Court’s grant of summary judgment and
employ the same analysis required of the District Court to
determine whether there are any issues of material fact that
would enable the nonmoving party to prevail. Hamilton v.
Leavy, 117 F.3d 742, 746 (3d Cir. 1997). Summary judgment

5
is appropriate when “there is no genuine issue as to any
material fact and . . . the moving party is entitled to a
judgment as a matter of law.” Fed. R. Civ. P. 56(c). At the
summary judgment stage, we view all evidence and consider
all reasonable inferences in a light most favorable to the non-
moving party. Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 255 (1986).

III. ANALYSIS

“To establish a claim of copyright infringement, a
plaintiff must establish: (1) ownership of a valid copyright;
and (2) unauthorized copying of original elements of the
plaintiff’s work.” Dun & Bradstreet Software Servs., Inc. v.
Grace Consulting, Inc., 307 F.3d 197, 206 (3d Cir. 2002). In
granting summary judgment in favor of Appellees, the
District Court relied on a Report and Recommendation which
concluded that: (1) Kay Berry did not have a valid registration
over its multiple works because they were not sufficiently
related, (2) Sculpture No. 646 contained no copyrightable
subject matter, and (3) Sculpture No. 646 embodied an
expression that was inseparable from an underlying idea. For
the reasons set forth below, we will reverse.

A. Kay Berry’s Registration

We begin by addressing the validity of Kay Berry’s
copyright registration. According to 17 U.S.C. § 411(a), “no
action for infringement of the copyright in any United States
work shall be instituted until preregistration or registration of
the copyright claim has been made in accordance with this

6
title.” See Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp.,
354 F.3d 112, 115 (2d Cir. 2003); Xoom, Inc. v. Imageline,
Inc., 323 F.3d 279, 283 (4th Cir. 2003). Kay Berry claims
that Sculpture No. 646 was properly registered under
Certificate of Registration VA857-542, which covers “Garden
Accent Rocks,” described as “[s]culptural works with design
and text.” Along with Registration VA857-542, Kay Berry
deposited its Garden Accent Rocks catalog, which featured
pictures and descriptions of more than one hundred
sculptures, including Sculpture No. 646. Kay Berry claims
that this registration covers Sculpture No. 646 along with all
of the other works featured in the catalog. The District Court
disagreed, reasoning that the individual works featured in the
catalog were not validly registered because they were not
sufficiently related to each other to qualify for registration as
a group of works as required by 17 U.S.C.§ 408(c)(1). We
believe that this reasoning improperly ignored the governing
copyright registration regulations and caused the District
Court to evaluate Kay Berry’s registration under the incorrect
statutory provision.

1. Group Registration

Initially, Kay Berry argued that its Garden Accent
Rocks were properly registered as a group of related works
pursuant to 17 U.S.C. § 408(c)(1). The statute states in
relevant part:

The Register of Copyrights is authorized to specify by
regulation the administrative classes into which works
are to be placed for purposes of deposit and

7
 registration, and the nature of the copies or
phonorecords to be deposited in the various classes
specified. The regulations may require or permit, for
particular classes . . . a single registration for a group
of related works.

17 U.S.C. § 408(c)(1) (2005). Relying on Behnam Jewelry
Corp. v. Aron Basha Corp., 45 U.S.P.Q.2d 1078, 1087-88
(S.D.N.Y. 1997), Kay Berry claimed that when Congress
enacted § 408(c), it specifically attempted to liberalize the
copyright laws so as to allow a group of works to be
registered together, under a single registration, as long as they
were minimally connected. Kay Berry argued that, under this
permissive standard, its works were sufficiently related and
therefore validly registered as a group of works under the
applicable statutory provision.

Although we agree that § 408(c) represents a
liberalization of the copyright laws, it does not define the
requirements for a valid copyright registration. The
applicable subsection states only that “[t]he regulations may
require or permit, for particular classes . . . a single
registration for a group of related works. 17 U.S.C. §
408(c)(1) (emphasis added).

“It is elementary that the meaning of a statute must, in
the first instance, be sought in the language in which the act is
framed, and if that is plain, and if the law is within the
constitutional authority of the law-making body which passed

8
it, the sole function of the courts is to enforce it according to
its terms.” Caminetti v. United States, 242 U.S. 470, 485
(1917). Here, the language plainly does not grant to all
copyright applicants a general right to register a group of
works under a single registration. Our conclusion that the
plain language of § 408(c)(1) merely allows the Register of
Copyrights to determine what types of works are eligible for
group registration is confirmed by the more stringent
language of § 408(c)(2), which mandates that the Register of
Copyrights establish regulations permitting group registration
of works appearing in periodicals. See 17 U.S.C. § 408(c)(2)
(“Without prejudice to the general authority provided under
clause (1), the Register of Copyrights shall establish
regulations . . . .”) (emphasis added).

The Register of Copyrights has exercised the authority
delegated by § 408(c)(1) by promulgating rules allowing for
group registration for “automated databases,” “related
serials,” “daily newspapers,” “contributions to periodicals,”
“daily newsletters,” and “published photographs.” See 37
C.F.R. §§ 202.3(b)(4)-(9). Kay Berry, however, describes its
Garden Accent Rocks as “sculptural works.” Since the
Register of Copyrights has not promulgated regulations
allowing for group registration of sculptural works, we
conclude that Kay Berry’s registration is not valid under the
current group registration provisions.

2. Single Work Registration

Kay Berry alternatively contends that its copyright
registration is valid as a “single work” under 37 C.F.R. §

9
202.3(b)(3). This provision describes a single work, “[i]n the
case of published works,” as “all copyrightable elements that
are otherwise recognizable as self-contained works, that are
included in a single unit of publication, and in which the
copyright claimant is the same.” 37 C.F.R. §
202.3(b)(3)(i)(A). The classic example of a single work is a
board game. The board, the playing pieces, and the
instructions may all be individually entitled to copyright
protection, but since they are packaged as a single unit (the
game itself), it is appropriate to allow the copyright owner to
register the entire game, and protect the individual elements
through that single registration. Kay Berry claims that its
copyright registration covers its catalog deposit, and that
Sculpture No. 646, which was published in the catalog, is an
individually recognizable element of that single work and is
therefore entitled to the benefits of registration under the
“Single Work” provision.1

“Single Work” registration is separate and distinct
from “Group Registration.” The group registration provisions

1
“‘Publication’ is the distribution of copies . . . of a work
to the public by sale or other transfer of ownership, or by rental,
lease, or lending. The offering to distribute copies . . . to a group
of persons for purposes of further distribution, public
performance, or public display, constitutes publication.” 17
U.S.C. § 101. “‘Copies’ are material objects . . . in which a
work is fixed by any method now known or later developed, and
from which the work can be perceived, reproduced, or otherwise
communicated . . . .” Id. Therefore, under these definitions, a
copy of Sculpture No. 646 was published in the Catalog.
10
were enacted pursuant to 17 U.S.C. § 408(c)(1), and were
based on Congress’s desire to liberalize the registration
process. See H.R. Rep. No. 94-1476, at 154 (1976), reprinted
in 1976 U.S.C.C.A.N. 5659, 5770. The single work
registration provision, by contrast, was promulgated pursuant
to the language of 17 U.S.C. § 408(a), which states that “the
owner of copyright or of any exclusive right in the work may
obtain registration of the copyright claim . . . .” 17 U.S.C. §
408(a) (emphasis added). This provision codified the pre-
existing Copyright Office practice of allowing copyright
owners to register multiple works published together as a
single work for a single fee. See Registration of Claims to
Copyright, 43 Fed. Reg. 965, 966 (Jan. 5, 1978) (codified at
37 C.F.R. pt. 202). At the time this provision was established,
the Copyright Office had “reserved for implementation in a
separate proceeding, the possibility of providing for ‘a single
registration for a group of “related works”[’] under paragraph
(c)(1) of section 408.” Id.

The single work registration regulation is distinct from
the group registration regulation and has different qualifying
requirements. The single work registration regulation is silent
on whether the individual, self-contained elements of the
“single work” be “related” in order to be registered. Instead,
single work registration requires, in the case of published
works, that all of the self-contained works be “included in a
single unit of publication” and share the same copyright
claimant. 37 C.F.R. § 202.3(b)(3)(i)(A).

In Benham Jewelry, 45 U.S.P.Q.2d at 1087-88, the
District Court confused the requirements for single work

11
registration and group registration. The court erroneously
concluded that the single work regulation was promulgated
pursuant to 17 U.S.C. § 408(c) not 408(a) and failed to note
the distinct regulatory requirements for single work
registration and group registration. Id. Although Benham
Jewelry quoted the single work registration regulation,
including its requirement of a “single unit of publication,” the
court repeatedly mentioned and discussed the requirements
for “single registration for multiple related works” or group
registration. Id.

In addition to confusing the regulatory provisions,
Benham Jewelry conducted an analysis that combined the
requirements of group registration and single work
registration. The court concluded that the jewelry was
sufficiently “related” both because it was “marketed as a
single line” and shared the same “basic design” and had other
visual elements in common. Id. at 1088. Because it
improperly melded the “single unit of publication”
requirement of single work registration and the “relatedness”
requirement of group registration, Benham Jewelry concluded
that the “single unit of publication” requirement was
superfluous where the works at issue were sufficiently related.
Id. This conclusion is incorrect because relatedness is not a
requirement for single work registration. As we have shown,
the single work registration regulation arises from a different
statutory provision than the group work registration regulation
and, as a result, we cannot ignore the single unit of
publication requirement as did Benham Jewelry.

In Donald Bruce & Co. v. B.N. Multi Com Corp., 964

12
F. Supp. 265, 268-69 (N.D. Ill. 1997), the court made a
similar analytical error. In that case, the court said that the
group registration provision for “single registration for a
group of related works” was at issue rather than the provision
for a single work. Id. at 268. However, during its discussion
of the relatedness requirement of group registration, the court
in Donald Bruce considered whether including otherwise
unrelated works in a “single unit of publication” might satisfy
the relatedness requirement for group registration. In other
words, the court suggested that including items in a single
unit of publication might serve as a proxy for relatedness.
This would improperly meld the group registration and single
work registration requirements.

Both Benham Jewelry and Donald Bruce fail to
account for the fundamental distinction between single work
registration under 37 C.F.R. § 202.3(b)(3), and group
registration under 37 C.F.R. § 202.3(b)(4). This distinction is
significant. In this instance, Kay Berry’s garden accent rocks
may not be sufficiently “related” but they were included in a
single unit of publication and the copyright claimant is the
same so, regardless of their relatedness, they may be
registered pursuant to the single work registration regulation.2

2
We further note that we are unable, on this record, to
determine whether Sculpture No. 646 was first published in the
Kay Berry’s catalog. The government, in an amicus curiae brief
submitted at our request, stated that only those individual works
first published in the single work will be covered by the single
work registration, citing U.S. Copyright Office, Compendium II:
Compendium of Copyright Office Practices § 607.01 at 600-11
13
(1984) (“Works that are otherwise recognizable as self-
contained may be registered on a single application and upon
payment of a single fee, if they are first published in a single
unit of publication and the copyright claimant of all works in the
unit is the same.”) (emphasis added). The government claimed
that to the extent that the single work contains both new and
preexisting matter, it is a “compilation” or a “derivative work.”
See 17 U.S.C. § 101 (2005). Accordingly, it contended, the
copyright “extends only to the material contributed by the author
of such work, as distinguished from the preexisting material
employed in the work.” See 17 U.S.C. § 103(b) (2005).
Furthermore, the government claimed, “[t]he copyright in such
work is independent of, and does not affect . . . any copyright
protection in the preexisting material.” See id.
On remand, the District Court will need to determine in
the first instance whether this presents a barrier to Kay Berry’s
registration. Although the issue is not before us on appeal, we
note that decisions of this Court and others counsel that
registration of a collective work is sufficient to support an action
for infringement of the underlying self-contained parts. Educ.
Testing Servs. v. Katzman, 793 F.2d 533, 539 (3d Cir. 1986)
(“Although compilations or ‘collective’ works may include
uncopyrightable works, as well as previously copyrighted
works, the fact that the registration was for compilations does
not preclude protection for the material therein contributed by
the author.”); see also Xoom, Inc., 323 F.3d at 284 (owner of
copyright in the collective work and underlying works was the
same and therefore could maintain an action for infringement of
the underlying works); Streetwise Maps v. VanDam, Inc., 159
F.3d 739, 747 (2d Cir. 1998) (where the copyright owners are
14
 B. Sculpture No. 646 is entitled to Copyright Protection

Next, the District Court concluded that Sculpture No.
646 lacked any protectible configuration or design. We
disagree.

“To qualify for copyright protection, a work must be
original to the author . . . mean[ing] only that the work was
independently created by the author (as opposed to copied
from other works), and that it possesses at least some minimal
degree of creativity.” Feist Publ’ns, Inc. v. Rural Tel. Serv.
Co., 499 U.S. 340, 345 (1991) (internal citations omitted). A
sculptural work’s creativity derives from the combination of
texture, color, size, and shape, as well as the particular verse
inscribed and the way the verse is presented. It means
nothing that these elements may not be individually entitled to
protection; “all creative works draw on the common
wellspring that is the public domain. In this pool are not only
elemental ‘raw materials,’ like colors, letters, descriptive
facts, and the catalogue of standard geometric forms, but also
earlier works of art that, due to the passage of time or for
other reasons, are no longer copyright protected.” Tufenkian
Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338
F.3d 127, 132 (2d Cir. 2003). When an author combines
these elements and adds his or her own imaginative spark,
creation occurs, and the author is entitled to protection for the

the same, a registration certificate for a later work is sufficient
to maintain an action for infringement of the pre-existing work).
15
result. Feist Publ’ns, Inc., 499 U.S. at 345. This is true even
when the author contributes only a minimal amount of
creativity. Id. at 348 (factual compilations may be
copyrightable when the author “chooses which facts to
include, in what order to place them, and how to arrange the
collected data so that they may be used effectively by
readers.”); see also Reader’s Digest Ass’n, Inc. v.
Conservative Digest, Inc., 821 F.2d 800, 806 (D.C. Cir. 1987)
(although no element of magazine cover – ordinary lines,
typefaces, and colors – is entitled to coyright protection, the
distinctive arrangement is entitled to protection as a graphic
work).

Here, Kay Berry claims that it selected an inspirational
poem from the public domain, adapted that poem to make it
visually and rhythmically appealing, and then cast it on its
own sculptural work. For these reasons, as well as those set
forth above, we conclude that this quantum of creativity is
sufficient to qualify for copyright protection. See Feist
Publ’ns., 499 U.S. at 348; Reader’s Digest Ass’n, 821 F.2d at
806.

C. Kay Berry’s Copyright Registration Does Not Extend
to an Idea

We next turn our attention to the second part of the
infringement inquiry – whether Appellees improperly copied
Sculpture No. 646, and specifically, whether the expression
Kay Berry seeks to protect has merged with an unprotectible
idea. Copying refers to the act of infringing any of the
exclusive rights that accrue to the owner of a valid copyright,

16
as set forth at 17 U.S.C. § 106, “including the rights to
distribute and reproduce copyrighted material.” Ford Motor
Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 291 (3d Cir.
1991). It may be demonstrated by showing that the
defendant had access to the copyrighted work and that the
original and allegedly infringing works share substantial
similarities. Id.; see also Dam Things from Denmark v. Russ
Berrie & Co., 290 F.3d 548, 561 (3d Cir. 2002); Whelan
Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222,
1231-32 (3d Cir. 1986).

“Substantial similarity,” in turn, is further broken down
into two considerations: “(1) whether the defendant copied
from the plaintiff’s work and (2) whether the copying, if
proven, went so far as to constitute an improper
appropriation.” Atari, Inc. v. North American Philips
Consumer Elecs. Corp., 672 F.2d 607, 614 (7th Cir. 1982),
superceded in part by Fed. R. Civ. P. 52(a) (as amended
1985). “First, the fact-finder must decide whether there is
sufficient similarity between the two works in question to
conclude that the alleged infringer used the copyrighted work
in making his own.” Whelan Assocs., 797 F.2d at 1232. A
showing of substantial similarity in this sense, coupled with
evidence that the infringing author had access to the original
work, permits a fact-finder to infer that the infringing work is
not itself original, but rather is based on the original. At this
stage of the inquiry, expert testimony is permissible to help
reveal the similarities that a lay person might not ordinarily
perceive. Id. Direct evidence of copying or an admission by
the infringing author would satisfy this test as well. Dam
Things from Denmark, 290 F.3d at 562.

17
 “Not all copying, however, is copyright infringement.”
Feist Publ’ns, 499 U.S. at 361. Even if actual copying is
proven, “the fact-finder must decide without the aid of expert
testimony, but with the perspective of the ‘lay observer,’
whether the copying was ‘illicit,’ or ‘an unlawful
appropriation’ of the copyrighted work.” Whelan Assocs.,
797 F.2d at 1232. The focus in this second step is “whether
the substantial similarities relate to protectible material.” Dam
Things from Denmark, 290 F.3d at 562. “Phrased in an
alternative fashion, it must be shown that copying went so far
as to constitute improper appropriation, the test being the
response of the ordinary lay person.” Universal Athletic Sales
Co. v. Salkeld, 511 F.2d 904, 907 (3d Cir. 1975) (citing
Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946)). Part of this
inquiry involves distinguishing between the author’s
expression and the idea or theme that he or she seeks to
convey or explore.

It is a fundamental premise of copyright law that an
author can protect only the expression of an idea, but not the
idea itself. See 17 U.S.C. § 102(b); see also Baker v. Selden,
101 U.S. 99, 103-04 (1880); Franklin Mint Corp. v. Nat’l
Wildlife Art Exch., Inc., 575 F.2d 62, 64-65 (3d Cir. 1978).
Thus, an author may base his work on the same inspiration as
that of an earlier work, but he may not “‘copy the copy.’”
Franklin Mint, 575 F.2d at 65 (quoting Bleistein v. Donaldson
Lithographing Co., 188 U.S. 239, 249 (1903)). When
determining whether two works are substantially similar, a
fact-finder must determine whether the later work is similar
because it appropriates the unique expressions of the original
author, or merely because it contains elements that would be

18
expected when two works express the same idea or explore
the same theme.

Nearly every work involves a blend of idea and
expression. Because an author can only demonstrate
substantial similarity by referencing those aspects of his work
that embody his creative contribution, he will have a more
difficult time proving infringement if his work contains only a
minimal amount of original expression. Universal Athletic
Sales, 511 F.2d at 908 (“[B]etween the extremes of conceded
creativity and independent efforts amounting to no more than
the trivial, the test of appropriation necessarily varies.”). As
one court has explained:

[A] copyright on a work which bears practically a
photographic likeness to the natural article . . . is likely
to prove a relatively weak copyright. This is not to say
that, as a matter of law, infringement of such a
copyright cannot be inferred from mere similarity of
appearance, but only that the plaintiff's burden will be
that much more difficult to sustain because of the
intrinsic similarities of the copyrighted and accused
works.

First Am. Artificial Flowers, Inc. v. Joseph Markovits, Inc.,
342 F. Supp. 178, 186 (S.D.N.Y. 1972). The First Circuit has
endorsed this view, explaining that when there is only a
limited number of ways to express an idea “the burden of
proof is heavy on the plaintiff who may have to show ‘near
identity’ between the works at issue.” Concrete Mach. Co. v.
Classic Lawn Ornaments, Inc., 843 F.2d 600, 606-07 (1st Cir.

19
1988) (citing Sid & Marty Krofft Television v. McDonald’s
Corp., 562 F.2d 1157, 1167 (9th Cir. 1977)).

In some instances, there may come a point when an
author’s expression becomes indistinguishable from the idea
he seeks to convey, such that the two merge. Educ. Testing
Servs. v. Katzman, 793 F.2d 533, 539 (3d Cir. 1986). In these
circumstances, no protection is available for the expression;
otherwise, the copyright owner could effectively acquire a
monopoly on the underlying art or the idea itself. Id. Merger
is rare, however, and is generally found in works with a
utilitarian function, id. (citing Brown Instrument Co. v.
Warner, 161 F.2d 910 (D.C. Cir. 1947); M.M. Bus. Forms
Corp. v. Uarco, 472 F.2d 1137 (6th Cir. 1973)). This Court
has never found an instance in which a completely aesthetic
expression merged into an idea. For instance, in Masquerade
Novelty, Inc. v. Unique Indus., 912 F.2d 663, 666 (3d Cir.
1990), this Court dealt with a case in which the plaintiff sued
the defendant for infringing its copyright on humorous nose
masks designed to resemble the noses, snouts, and beaks of
different animals. Although the issue of substantial similarity
was not before the Court, we recognized that “copyrights
protect only expressions of ideas and not ideas themselves,”
and explained:

By holding that Masquerade’s nose masks are
copyrightable, we do not intimate that it has the
exclusive right to make nose masks representing pig,
elephant and parrot noses. On remand, it will be
Masquerade’s burden to show that Unique’s nose
masks incorporate copies, in the copyright law sense,

20
 of Masquerade’s sculptures, rather than sculptures that
derive their similarity to Masquerade’s sculptures
merely from the commonality of the animal subjects
both represent.

Masquerade Novelty, 912 F.2d at 671-72 (internal citation
omitted).

Here, as in Masquerade Novelty, the protectible
originality of the allegedly infringed work is to be found, if at
all, solely in its appearance. Kay Berry claims that Appellees
infringed its copyright not by using the same public domain
poem, or inscribing a rock with text, but by copying the
specific combination of elements it employed to give
Sculpture No. 646 its unique look. Although the evidentiary
burden upon it is high, for the reasons we have discussed, we
conclude that Kay Berry is entitled to the opportunity to
demonstrate that the Memory Stone is neither a unique
creation, nor the unavoidable expression of a common idea,
but rather an impermissible copy of Sculpture No. 646. We
will therefore reverse and remand to the District Court.

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