[*412] MANSFIELD, Circuit Judge:
Carol Barnhart Inc. ("Barnhart"), which sells display
forms to department stores, distributors, and small retail stores,
appeals from a judgment of the Eastern District of New York, Leonard
D. Wexler, Judge, granting a motion for summary judgment made
by defendant Economy Cover Corporation ("Economy"),
which sells a wide variety of display products primarily to jobbers
and distributors. Barnhart's complaint alleges that Economy has
infringed its copyright and engaged in unfair competition by offering
for sale display forms copied from four original "sculptural
forms" to which Barnhart holds the copyright. Judge Wexler
granted Economy's motion for summary judgment on the ground that
plaintiff's mannequins of partial human torsos used to display
articles of clothing are utilitarian articles not containing separable
works of art, and thus are not copyrightable. We affirm.
The bones of contention are four human torso forms designed by
Barnhart, each of which is life-size, without neck, arms, or a
back, and made of expandable white styrene. Plaintiff's president
created the forms in 1982 by using clay, buttons, and fabric to
develop an initial mold, which she then used to build an aluminum
mold into which the poly-styrene is poured to manufacture the
sculptural display form. There are two male and two female upper
torsos. One each of the male and female torsos is unclad for the
purpose of displaying shirts and sweaters, while the other two
are sculpted with shirts for displaying sweaters and jackets.
All the forms, which are otherwise life-like and anatomically
accurate, have hollow backs designed to hold excess fabric when
the garment is fitted onto the form. Barnhart's advertising stresses
the forms' uses to display items such as sweaters, blouses, and
dress shirts, and states that they come "packaged in UPS-size
boxes for easy shipping and [are] sold in multiples of twelve."
[*413] Plaintiff created the first of the forms, Men's Shirt,
shortly after its founding in March, 1982, and by the end of July
it had attracted $18,000 worth of orders. By December 1982, plaintiff
had designed all four forms, and during the first morning of the
twice-yearly trade show sponsored by the National Association
of the Display Industry ("NADI"), customers had placed
$35,000 in orders for the forms. Plaintiff's president maintains
that the favorable response from visual merchandisers, Barnhart's
primary customers, "convinced me that my forms were being
purchased not only for their function but for their artistically
sculptured features."
Economy, which sells its wide range of products primarily to jobbers,
distributors, and national chain stores, not to retail stores,
first learned in early 1983 that Barnhart was selling its display
forms directly to retailers. After observing that no copyright
notice appeared either on Barnhart's forms or in its promotional
literature, Economy contracted to have produced for it four forms
which it has conceded, for purposes of its summary judgment motion,
were "copied from Barnhart's display forms" and are
"substantially similar to Barnhart's display forms."
Economy began marketing its product, "Easy Pin Shell Forms,"
in September 1983. Later in the same month, Barnhart wrote to
NADI to complain that Economy was selling exact duplicates of
Barnhart's sculptural forms at a lower price and asked it to stop
the duplication and underselling. Economy responded with a letter
from its counsel dated October 17, 1983 to the Chairman of NADI's
Ethics Committee stating that Economy was not guilty of any "underhanded"
business practices since Barnhart's forms were not protected by
"patent, copyright, trademark, or otherwise."
On the same date (October 17, 1983) Barnhart applied for copyright
registration for a number of products, including the four forms
at issue here. It identified each of the forms as "sculpture"
and sought expedited examination of its applications because of
the possibility of litigation over copyright infringement. Copyright
registration was granted the same day. Then, on October 18, Barnhart
informed Economy that its Easy Pin Shell Forms violated Barnhart's
rights and demanded that it discontinue its advertising and sale
of the forms. In November 1983, more than 18 months after selling
its first form, Barnhart advised its customers that copyright
notice had "inadvertently [been] omitted" from the display
forms previously distributed and enclosed adhesive stickers bearing
a copyright notice, which it asked the customers to affix to unmarked
products in inventory.
Barnhart filed this suit in December 1983. Count I charges Economy
with violating Barnhart's rights under the Copyright Act, 17 U.S.C.
@@ 101-810 (1982), by copying and selling Barnhart's four display
forms. Count II alleges that Economy has engaged in unfair competition
under the common law of the State of New York. The complaint seeks
an adjudication that Economy has infringed Barnhart's copyrights,
a preliminary and permanent injunction against Economy's producing,
advertising, or selling its forms, damages (consequential, statutory,
and punitive), and attorney's fees. Economy moved for summary
judgment on the issue of the copyrightability of Barnhart's display
forms (and the issue of statutory damages and attorney's fees).
After a hearing on February 3, 1984, Judge Wexler issued an order
and opinion on September 12, 1984 granting defendant's motion
for summary judgment on the issue of copyrightability. 594 F.
Supp. 364 (E.D.N.Y. 1984). The district court rejected plaintiff's
arguments that the issue of copyrightability was an improper subject
for summary judgment and that the Copyright Office's issuance
of certificates of registration for Barnhart's four forms created
an insurmountable presumption of the validity of the copyrights.
On the central issue of copyrightability, it reviewed the statutory
language, legislative history, and recent case authority, concluding
that they all speak with "a single voice," i.e., that
a useful article may be copyrighted only to [*414] the extent
that "there is a physically or conceptually separable work
of art embellishing it. . . ." Id. at 370. Applying this
test, the district court determined that since the Barnhart forms
possessed no aesthetic features that could exist, either physically
or conceptually, separate from the forms as utilitarian articles,
they were not copyrightable.
On March 6, 1985, 603 F. Supp. 432, Judge Wexler denied Barnhart's
motion for reargument. The present appeal followed.
Appellant's threshold argument, that the district court erred
in ignoring the statutory presumption of validity accorded to
a certificate of copyright registration and to the line-drawing
expertise of the Copyright Office, can be disposed of briefly.
With respect to the prima facie validity of Copyright Office determinations,
17 U.S.C. @ 410(c) states:
Since the four Barnhart forms are concededly useful articles, the crucial issue in determining their copyrightability is whether they possess artistic or aesthetic features that are physically or conceptually separable from their utilitarian dimension. A "useful article" is defined in 17 U.S.C. @ 101 as "an article having an intrinsic utilitarian function that is not merely to [*415] portray the appearance of the article or to convey information." Although 17 U.S.C. @ 102(a)(5) extends copyright protection to "pictorial, graphic, and sculptural works," the definition of "pictorial, graphic, and sculptural works," at 17 U.S.C. @ 101, provides that the design of a useful article
To interpret the scope and applicability of this language,
and the extent to which it may protect useful articles such as
the four Barnhart forms, we must turn to the legislative history
of the 1976 Copyright Act, which is informative.
Congress, acting under the authority of Art. I, @ 8, cl. 8 of
the Constitution, extended copyright protection to three-dimensional
works of art in the Copyright Act of 1870, which defined copyrightable
subject matter as:
The Supreme Court upheld an expansive reading of "authors" and "writings" in Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 60, 28 L. Ed. 349, 4 S. Ct. 279 (1884), rejecting the claim that Congress lacked the constitutional authority to extend copyright protection to photographs and negatives thereof. The Court further contributed to the liberalization of copyright law in Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 47 L. Ed. 460, 23 S. Ct. 298 (1903) (Holmes, J.), in which it held that chromo-lithographs used on a circus poster were not barred from protection under the copyright laws. In Bleistein, Justice Holmes stated his famous "anti-discrimination" principle:
The Copyright Act of 1909 expanded the scope of the copyright statute to protect not only traditional fine arts, but also "works of art; models or designs for works of art." Copyright Act of 1909, ch. 320, @ 5(g), 35 Stat. 1075, 1077 (codified at 17 U.S.C. @@ 1-216 (1976)), reprinted in 4 M. Nimmer, supra, App. 6, at 6-5. However, this language was narrowly interpreted by Copyright Office regulations issued in 1910, which stated in part:
The prospects for a work of applied art obtaining a copyright were enhanced in December 1948, when the Copyright Office changed the definition of a "work of art" in its Regulation @ 202.8:
While this regulation seemed to expand coverage for works of applied art, it did not explicitly extend copyright protection to industrial design objects.
The next significant historical step was taken not by Congress but by the Supreme Court in its 1954 decision in Mazer v. Stein, supra, where it upheld @ 202.8 as a proper standard for determining when a work of applied art is entitled to copyright protection, in the context of deciding whether lamps which used statuettes of male and female dancing figures made of semivitreous china as bases were copyrightable. The narrow question faced was whether the addition of the lamp attachments deprived the statuettes of the copyright protection to which they were separately entitled. The Court answered that question in the negative, holding that an ornamental design does not necessarily cease to be artistic when embodied in a useful article and may therefore be entitled to copyright protection. Id. at 214.
The Copyright Office implemented Mazer v. Stein by promulgating new regulations interpreting @ 5(g) of the 1909 Act, which stated in part:
In an effort to provide some form of protection to "three-dimensional designs of utilitarian articles as such," a number of separate design bills were introduced into Congress. See, e.g., H.R. 8873 (Willis Bill), 85th Cong., 1st Sess. July 23, 1957, and S. 2075 (O'Mahoney-Wiley-Hart Bill), 86th Cong., 1st Sess. May 28, 1959. Finally, Title II of a bill passed by the Senate in 1975, S. 22 (The Design Protection Act of 1975), proposed to offer legal protection to the creators of ornamental designs of useful articles.n2 It defined "pictorial, graphic, [*417] and sculptural works" to "include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, plans, diagrams, and models."
The House, however, responded by passing a strikingly different version. To the text passed by the Senate it added the following:
Both of the added clauses were from work of the Copyright Office: the first from its 1948 Regulation @ 202.8, approved by the Supreme Court in Mazer v. Stein; the second from its post-Mazer @ 202.10(c).*The bill as finally enacted omitted entirely the proposed Title II. n3
[*418] The legislative history thus confirms that, while copyright protection has increasingly been extended to cover articles having a utilitarian dimension, Congress has explicitly refused copyright protection for works of applied art or industrial design which have aesthetic or artistic features that cannot be identified separately from the useful article. Such works are not copyrightable regardless of the fact that they may be "aesthetically satisfying and valuable." H.R. Rep. No. 1476, supra, at 55, 1976 U.S. Code Cong. & Ad. News at 5668.
Applying these principles, we are persuaded that since the
aesthetic and artistic features of the Barnhart forms are inseparable
from the forms' use as utilitarian articles the forms are not
copyrightable. Appellant emphasizes that clay sculpting, often
used in traditional sculpture, was used in making the molds for
the forms. It also stresses that the forms have been responded
to as sculptural forms, and have been used for purposes other
than modeling clothes, e.g., as decorating props and signs without
any clothing or accessories. While this may indicate that the
forms are "aesthetically satisfying and valuable," it
is insufficient to show that the forms possess aesthetic or artistic
features that are physically or conceptually separable from the
forms' use as utilitarian objects to display clothes. On the contrary,
to the extent the forms possess aesthetically pleasing features,
even when these features are considered in the aggregate, they
cannot be conceptualized as existing independently of their utilitarian
function.
Appellant seeks to rebut this conclusion by arguing that the four
forms represent a concrete expression of a particular idea, e.g.,
the idea of a woman's blouse, and that the form involved, a human
torso, is traditionally copyrightable. Appellant suggests that
since the Barnhart forms fall within the traditional category
of sculpture of the human body, they should be subjected to a
lower level of scrutiny in determining its copyrightability. We
disagree. We find no support in the statutory language or legislative
history for the claim that merely because a utilitarian article
falls within a traditional art form it is entitled to a lower
level of scrutiny in determining its copyrightability. Recognition
of such a claim would in any event conflict with the anti-discrimination
principle Justice Holmes enunciated in Bleistein v. Donaldson
Lithographing Co., supra, 188 U.S. at 251-52.
Nor do we agree that copyrightability here is dictated by our decision in Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980), a case we described as being "on a razor's edge of copyright law." There we were called on to determine whether two belt buckles bearing sculptured designs cast in precious metals and principally used for decoration were copyrightable. Various versions of these buckles in silver and gold sold wholesale at prices ranging from $147.50 to $6,000 and were offered by high fashion and jewelry stores. Some had also been accepted by the Metropolitan Museum of Art for its permanent collection.
[*419] In concluding that the two buckles were copyrightable we relied on the fact that "the primary ornamental aspect of the Vaquero and Winchester buckles is conceptually separable from their subsidiary utilitarian function." Id. at 993. A glance at the pictures of the two buckles, reproduced at id. 995, coupled with the description in the text, confirms their highly ornamental dimensions and separability. What distinguishes those buckles from the Barnhart forms is that the ornamented surfaces of the buckles were not in any respect required by their utilitarian functions; the artistic and aesthetic features could thus be conceived of as having been added to, or superimposed upon, an otherwise utilitarian article. The unique artistic design was wholly unnecessary to performance of the utilitarian function. In the case of the Barnhart forms, on the other hand, the features claimed to be aesthetic or artistic, e.g., the life-size configuration of the breasts and the width of the shoulders, are inextricably intertwined with the utilitarian feature, the display of clothes. Whereas a model of a human torso, in order to serve its utilitarian function, must have some configuration of the chest and some width of shoulders, a belt buckle can serve its function satisfactorily without any ornamentation of the type that renders the Kieselstein-Cord buckles distinctive. n5
The judgment of the district court is affirmed.
JON O. NEWMAN, Circuit Judge, dissenting:
This case concerns the interesting though esoteric issue of "conceptual
separability" under the Copyright Act of 1976. Because I
believe the majority has either misunderstood the nature of this
issue or applied an incorrect standard in resolving the issue
in this case, I respectfully dissent from the judgment affirming
the District Court's grant of summary judgment for the defendant.
I would grant summary judgment to the plaintiff as to two of the
objects in question and remand for trial of disputed issues of
fact as to the other two objects in question.
[*420] The ultimate issue in this case is whether four objects
are eligible for copyright protection. The objects are molded
forms of styrene. Each is a life-size, three-dimensional representation
of the front of the human chest. Two are chests of males, and
two are chests of females. For each gender, one form represents
a nude chest, and one form represents a chest clad with a shirt
or a blouse.
Section 102(a)(5) of the Act extends copyright protection to "sculptural
works," which are defined to include "three-dimensional
works of fine, graphic, and applied art" and "works
of artistic craftsmanship insofar as their form but not their
mechanical or utilitarian aspects are concerned." 17 U.S.C.
@ 101 (1982). The definition of "sculptural works" contains
a special limiting provision for "useful articles":
Id. Each of the four forms in this case is indisputably a "useful
article" as that term is defined in section 101 of the Act,
17 U.S.C. @ 101 (1982), since each has the "intrinsic utilitarian
function" of serving as a means of displaying clothing and
accessories to customers of retail stores. Thus, the issue becomes
whether the designs of these useful articles have "sculptural
features that can be identified separately from, and are capable
of existing independently of, the utilitarian aspects" of
the forms.
This elusive standard was somewhat clarified by the House Report
accompanying the bill that became the 1976 Act. The Report states
that the article must contain "some element that, physically
or conceptually, can be identified as separable from the utilitarian
aspects of that article." H.R. Rep. No. 1476, 94th Cong.,
2d Sess. 55, reprinted in 1976 U.S. Code Cong. & Ad. News
5668 (emphasis added). In this Circuit it is settled, and the
majority does not dispute, that "conceptual separability"
is distinct from " physical separability" and, when
present, entitles the creator of a useful article to a copyright
on its design. See Kieselstein-Cord v. Accessories by Pearl, Inc.,
632 F.2d 989, 993 (2d Cir. 1980); see also Trans-World Manufacturing
Corp. v. Al Nyman & Sons, Inc., 95 F.R.D. 95, 98-99 (D. Del.
1982); but see Esquire, Inc. v. Ringer, 192 U.S. App. D.C. 187,
591 F.2d 796, 803-04 (D.C. Cir. 1978), cert. denied, 440 U.S.
908, 59 L. Ed. 2d 456, 99 S. Ct. 1217, 201 U.S.P.Q. (BNA) 256
(1979) (arguably rejecting the independent force of "conceptual
separability").
What must be carefully considered is the meaning and application
of the principle of "conceptual separability." n1 Initially,
it [*421] may be helpful to make the obvious point that this principle
must mean something other than "physical separability."
That latter principle is illustrated by the numerous familiar
examples of useful objects ornamented by a drawing, a carving,
a sculpted figure, or any other decorative embellishment that
could physically appear apart from the useful article. Professor
Nimmer offers the example of the sculptured jaguar that adorns
the hood of and provides the name for the well-known British automobile.
See 1 Nimmer on Copyright @ 2.08[B] at 2-96.1 (1985). With all
of the utilitarian elements of the automobile physically removed,
the concept, indeed the embodiment, of the artistic creation of
the jaguar would remain. Since "conceptual separability"
is not the same as "physical separability," it should
also be obvious that a design feature can be "conceptually
separable" from the utilitarian aspect of a useful article
even if it cannot be separated physically.n2
There are several possible ways in which "conceptual separability"
might be understood. One concerns usage. An article used primarily
to serve its utilitarian function might be regarded as lacking
"conceptually separable" design elements even though
those design elements rendered it usable secondarily solely as
an artistic work. There is danger in this approach in that it
would deny copyright protection to designs of works of art displayed
by a minority because they are also used by a majority as useful
articles. The copyrightable design of a life-size sculpture of
the human body should not lose its copyright protection simply
because mannequin manufacturers copy it, replicate it in cheap
materials, and sell it in large quantities to department stores
to display clothing.
A somewhat related approach, suggested by a sentence in Judge
Oakes' opinion in Kieselstein-Cord, is to uphold the copyright
whenever the decorative or aesthetically pleasing aspect of the
article can be said to be "primary" and the utilitarian
function can be said to be " secondary." 632 F.2d at
993. This approach apparently does not focus on frequency of utilitarian
and non-utilitarian usage since the belt buckles in that case
were frequently used to fasten belts and less frequently used
as pieces of ornamental jewelry displayed at various locations
other than the waist. The difficulty with this approach is that
it offers little guidance to the trier of fact, or the judge endeavoring
to determine whether a triable issue of fact exists, as to what
is being measured by the classifications "primary" and
" secondary."
Another approach, also related to the first, is suggested by Professor
Nimmer, who argues that "conceptual separability exists where
there is any substantial likelihood that even if the article had
no utilitarian use it would still be marketable to some significant
segment of the community simply because of its aesthetic qualities."
1 Nimmer, supra, @ 2.08[B] at 2-96.2 (footnote [*422] omitted).
This "market" approach risks allowing a copyright only
to designs of forms within the domain of popular art, a hazard
Professor Nimmer acknowledges. See id. at 2-96.3. However, various
sculpted forms would be recognized as works of art by many, even
though those willing to purchase them for display in their homes
might be few in number and not a "significant segment of
the community."
Some might suggest that "conceptual separability" exists
whenever the design of a form has sufficient aesthetic appeal
to be appreciated for its artistic qualities. That approach has
plainly been rejected by Congress. The House Report makes clear
that, if the artistic features cannot be identified separately,
the work is not copyrightable even though such features are "aesthetically
satisfying and valuable." H.R. Rep. No. 1476, supra, at 55,
1976 U.S. Code Cong. & Ad. News at 5668. A chair may be so
artistically designed as to merit display in a museum, but that
fact alone cannot satisfy the test of "conceptual separateness."
The viewer in the museum sees and apprehends a well-designed chair,
not a work of art with a design that is conceptually separate
from the functional purposes of an object on which people sit.
How, then, is "conceptual separateness" to be determined?
In my view, the answer derives from the word "conceptual."
For the design features to be "conceptually separate"
from the utilitarian aspects of the useful article that embodies
the design, the article must stimulate in the mind of the beholder
a concept that is separate from the concept evoked by its utilitarian
function. The test turns on what may reasonably be understood
to be occurring in the mind of the beholder or, as some might
say, in the "mind's eye" of the beholder. This formulation
requires consideration of who the beholder is and when a concept
may be considered "separate."
I think the relevant beholder must be that most useful legal personage
-- the ordinary, reasonable observer. This is the same person
the law enlists to decide other conceptual issues in copyright
law, such as whether an allegedly infringing work bears a substantial
similarity to a copyrighted work. See, e.g., Herbert Rosenthal
Jewelry Corp. v. Honora Jewelry Co., 509 F.2d 64 (2d Cir. 1974);
3 Nimmer, supra, @ 13.03[E]. Of course, the ordinary observer
does not actually decide the issue; the trier of fact determines
the issue in light of the impressions reasonably expected to be
made upon the hypothetical ordinary observer. And, as with other
issues decided by reference to the reactions of an ordinary observer,
a particular case may present undisputed facts from which a reasonable
trier could reach only one conclusion, in which event the side
favored by that conclusion is entitled to prevail as a matter
of law and have summary judgment entered in its favor. See, e.g.,
Kieselstein-Cord v. Accessories by Pearl, Inc., supra (copyright
proprietor prevails on issue of "conceptual separability"
as a matter of law).
The "separateness" of the utilitarian and non-utilitarian
concepts engendered by an article's design is itself a perplexing
concept. I think the requisite "separateness" exists
whenever the design creates in the mind of the ordinary observer
two different concepts that are not inevitably entertained simultaneously.
Again, the example of the artistically designed chair displayed
in a museum may be helpful. The ordinary observer can be expected
to apprehend the design of a chair whenever the object is viewed.
He may, in addition, entertain the concept of a work of art, but,
if this second concept is engendered in the observer's mind simultaneously
with the concept of the article's utilitarian function, the requisite
"separateness" does not exist. The test is not whether
the observer fails to recognize the object as a chair but only
whether the concept of the utilitarian function can be displaced
in the mind by some other concept. That does not occur, at least
for the ordinary observer, when viewing even the most artistically
designed chair. It may occur, however, when viewing some other
object if the utilitarian function of the object is not perceived
at all; it may also occur, even when the utilitarian function
is perceived by observation, perhaps [*423] aided by explanation,
if the concept of the utilitarian function can be displaced in
the observer's mind while he entertains the separate concept of
some non-utilitarian function. The separate concept will normally
be that of a work of art.
Some might think that the requisite separability of concepts exists
whenever the design of a form engenders in the mind of the ordinary
observer any concept that is distinct from the concept of the
form's utilitarian function. Under this approach, the design of
an artistically designed chair would receive copyright protection
if the ordinary observer viewing it would entertain the concept
of a work of art in addition to the concept of a chair. That approach,
I fear, would subvert the Congressional effort to deny copyright
protection to designs of useful articles that are aesthetically
pleasing. The impression of an aesthetically pleasing design would
be characterized by many as the impression of a work of art, thereby
blurring the line Congress has sought to maintain. I believe we
would be more faithful to the Congressional scheme if we insisted
that a concept, such as that of a work of art, is "separate"
from the concept of an article's utilitarian function only when
the non-utilitarian concept can be entertained in the mind of
the ordinary observer without at the same time contemplating the
utilitarian function. This temporal sense of separateness permits
the designs of some useful articles to enjoy copyright protection,
as provided by the 1976 Act, but avoids according protection to
every design that can be appreciated as a work of art, a result
Congress rejected. The utilitarian function is not truly a separate
concept for purposes of "conceptual separateness" unless
the design engenders a non-utilitarian concept without at the
same time engendering the concept of a utilitarian function.
In endeavoring to draw the line between the design of an aesthetically
pleasing useful article, which is not copyrightable, and the copyrightable
design of a useful article that engenders a concept separate from
the concept of its utilitarian function, courts will inevitably
be drawn into some minimal inquiry as to the nature of art. The
need for the inquiry is regrettable, since courts must not become
the arbiters of taste in art or any other aspect of aesthetics.
However, as long as "conceptual separability" determines
whether the design of a useful article is copyrightable, some
threshold assessment of art is inevitable since the separate concept
that will satisfy the test of "conceptual separability"
will often be the concept of a work of art. Of course, courts
must not assess the quality of art, but a determination of whether
a design engenders the concept of a work of art, separate from
the concept of an article's utilitarian function, necessarily
requires some consideration of whether the object is a work of
art.
Both the trier determining the factual issue of "conceptual
separability" and the judge deciding whether the undisputed
facts permit a reasonable trier to reach only one conclusion on
the issue are entitled to consider whatever evidence might be
helpful on the issue, in addition to the visual impressions gained
from the article in question. Thus, the fact that an object has
been displayed or used apart from its utilitarian function, the
extent of such display or use, and whether such display or use
resulted from purchases would all be relevant in determining whether
the design of the object engenders a separable concept of a work
of art. In addition, expert opinion and survey evidence ought
generally to be received. The issue need not turn on the immediate
reaction of the ordinary observer but on whether visual inspection
of the article and consideration of all pertinent evidence would
engender in the observer's mind a separate non-utilitarian concept
that can displace, at least temporarily, the utilitarian concept.
This approach seems consistent with and may even explain the few
cases to have considered the issue, although the language in all
of the decisions may not be entirely reconcilable. In Kieselstein-Cord,
we upheld the copyrightability of the artistic design of two belt
buckles. This holding was based upon a conclusion that the [*424]
design of the buckles was conceptually separate from the utilitarian
function of fastening a belt. That view, in turn, was based in
part on the undisputed fact that consumers with some frequency
wore the buckles as ornamental jewelry at locations other than
the waist. The Court apparently concluded that the buckles had
created in the minds of those consumers a conception of the design
as ornamental jewelry separate from the functional aspect of a
belt buckle. Expert testimony supported the view that the buckles
"rise to the level of creative art." 632 F.2d at 994.
The case was characterized by Judge Oakes as "on a razor's
edge of copyright law," id. at 990, as indeed it was; some
might have thought that even though some consumers wore the buckle
as ornamental jewelry, they still thought of the article as a
belt buckle, albeit one so artistically designed as to be appropriate
for wearing elsewhere than at the waist. Whether the concept in
the mind of the ordinary observer was of a piece of ornamental
jewelry, separate from the concept of a belt buckle, or only the
concept of a belt buckle that could be used either to fasten a
belt or decorate clothing at any location was undoubtedly a close
question.
In Trans-World Manufacturing Corp., supra, the interesting design
of a display case for eyeglasses was deemed to create for the
trier of fact a fair question as to whether a concept separable
from the utilitarian function existed. By contrast, the designs
of the wheel cover in Norris Industries v. I.T. & T., 696
F.2d 918 (11th Cir.), cert. denied, 464 U.S. 818, 78 L. Ed. 2d
89, 104 S. Ct. 78, 220 U.S.P.Q. (BNA) 385 (1983), and the outdoor
lighting fixture in Esquire, Inc. v. Ringer, supra, were each
deemed, as a matter of law, to engender no concept that was separable
from the utilitarian function of each article. It evidently was
thought that an ordinary observer viewing the articles would have
in mind no conception separate from that of a wheel cover (Norris)
or a lighting fixture (Esquire).
Our case involving the four styrene chest forms seems to me a
much easier case than Kieselstein-Cord. An ordinary observer,
indeed, an ordinary reader of this opinion who views the two unclothed
forms depicted in figures 1 and 2 below, would be most unlikely
even to entertain, from visual inspection alone, the concept of
a mannequin with the utilitarian function of displaying a shirt
or a blouse. The initial concept in the observer's mind, I believe,
would be of an art object, an entirely understandable mental impression
based on previous viewing of unclad torsos displayed as artistic
sculptures. Even after learning that these two forms are used
to display clothing in retail stores, the only reasonable conclusion
that an ordinary viewer would reach is that the forms have both
a utilitarian function and an entirely separate function of serving
as a work of art. I am confident that the ordinary observer could
reasonably conclude only that these two forms are not simply mannequins
that happen to have sufficient aesthetic appeal to qualify as
works of art, but that the conception in the mind is that of a
work of art in addition to and capable of being entertained separately
from the concept of a mannequin, if the latter concept is entertained
at all. As appellant contends, with pardonable hyperbole, the
design of Michaelangelo's "David" would not cease to
be copyrightable simply because cheap copies of it were used by
a retail store to display clothing. [*425]
