Barry Kieselstein-Cord v. Accessories by Pearl, Inc.

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.

*995

Winchester

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
“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.

Vaquero

* * * * * *
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*996um of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories: ******
(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 . . . supports] 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 *997on the Judiciary. It explicitly indicated that the rule of Mazer was incorporated.

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 *998of the House Comm, on the Judiciary (May 8, 1975) (testimony of Irwin Goldbloom), Reprinted in 14 Omnibus Copyright Revision Legislative History, 127-130, 139-141. The Justice Department noted the important substantive objections to the proposal — primarily it would charge the public a fee for the use of improved and pleasing new designs and styles in useful articles.

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, 35 U.S.C. 171-173, issued for a period of up to 14 years by the Patent Office for new, original and ornamental designs of articles of manufacture and the copyright laws which provide for registration and issuance of certificates of copyrights for the writings of authors. The new protection that is provided under the bill is not presently available, under the copyright laws and can only be obtained through a design patent after an examination procedure which determines whether the ornamental design meets the criteria of patentability, including unobviousness in view of the prior art, as provided by 35 U.S.C. 102, 103.
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. 1976 U.S.Code Cong. & Admin. News, 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 *999subsection excluding three-dimensional features of apparel:

DESIGNS NOT SUBJECT TO PROTECTION
§ 202. Protection under this title shall not be available for a design that is-
4: ¡Jc ‡ s(c # ‡
(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. 17 U.S.C. §§ 107-112. See also, e. g., Note, Copyright Infringement and the First Amendment, 79 Col.L.Rev. 320 (1979); Ramos, The Betamax Case: Accommodating Public Access and Economic Incentive in Copyright Law, 11 Intellectual Property L.Rev. 221, 230-1 (1979).

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.