Carol Barnhart Inc. v. Economy Cover Corporation

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.

*420The 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”:

the design of a useful article, as defined in this section, shall be considered a ... sculptural work only if, and only to the extent that, such design incorporates ... sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

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, 591 F.2d 796, 803-04 (D.C.Cir.1978), cert. denied, 440 U.S. 908, 99 S.Ct. 1217, 59 L.Ed.2d 456 (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.”1 Initially, it *421may 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.2

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 “subsidiary.” 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 “subsidiary.”

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 (foot*422note 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 qnd 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, per*423haps 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 *424design 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, 104 S.Ct. 78, 78 L.Ed.2d 89 (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 sepa-rabie 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).

Qur 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 wh0 views the two unclothed forms depict-ecj jn 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 con-elude 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 Michelangelo’s “David” would not cease to be copyrightable simply because cheap copies of it were used by a retail store to display clothing.

*425