United States Court of Appeals,

Second Circuit.

 CAROL BARNHART INC., Plaintiff-Appellant,

v.

 ECONOMY COVER CORPORATION, Defendant-Appellee.

No. 1295, Docket 84-7867.

 

Argued June 6, 1985.

Decided Sept. 12, 1985.

 

Action was brought alleging copyright infringement and unfair competition. The United States District Court for the Eastern District of New York, 594 F.Supp. 364 and 603 F.Supp. 432, Leonard D. Wexler, J., granted defendant's motion for summary judgment, and plaintiff appealed. The Court of Appeals, Mansfield, Circuit Judge, held that mannequins of partial human torsos used to display articles of clothing were utilitarian articles which did not possess artistic or aesthetic features that were physically or conceptually separable from their utilitarian dimension and therefore were not copyrightable.  Affirmed.

 

 

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 “[p]ackaged 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.

 

DISCUSSION

 

... 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

 

“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.”

 

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. ...

 

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:

 

Works of art (Class G)-(a) In General This class includes works of artistic*416 craftsmanship, in so far as their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels, glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings, drawings and sculpture.” 37 C.F.R. § 202.8 (1949), reprinted in Mazer v. Stein, supra, 347 U.S. at 212-13, 74 S.Ct. at 467-68.

 

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, 74 S.Ct. at 468.

 

The Copyright Office implemented Mazer v. Stein by promulgating new regulations interpreting § 5(g) of the 1909 Act, which stated in part:

 

“(c) If the sole intrinsic function of an article is its utility, the fact that the article is unique and attractively shaped will not qualify it as a work of art. However, if the shape of a utilitarian article incorporates features, such as artistic sculpture, carving, or pictorial representation, which can be identified separately and are capable of existing independently as a work of art, such features will be eligible for registration.” 37 C.F.R. § 202.10(c) ((1959), as amended June 18, 1959) (revoked 1978), reprinted in 4 M. Nimmer, supra, App. 11, at 11-13, to 11-14 (1985).

 

... [4] 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.

 

[5] 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, 23 S.Ct. at 300.

 

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 “[t]he 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.FN5

 

The judgment of the district court is affirmed.