489 F.Supp. 732 (S.D.N.Y. 1980), 80 Civ. 1029, Kieselstein-Cord v. Accessories by Pearl, Inc.

• Citation: 489 F.Supp. 732
• Party Name: 206 U.S.P.Q. 439 Barry KIESELSTEIN-CORD, Plaintiff, v. ACCESSORIES BY PEARL, INC., Defendant.
• Case Date: April 30, 1980
• Court: United States District Courts, 2nd Circuit

Page 732

489 F.Supp. 732 (S.D.N.Y. 1980)

206 U.S.P.Q. 439

Barry KIESELSTEIN-CORD, Plaintiff,

v.

ACCESSORIES BY PEARL, INC., Defendant.

No. 80 Civ. 1029(GLG).

United States District Court, D. New York

April 30, 1980

As Amended May 7, 1980.

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Phillips, Nizer, Benjamin, Krim & Ballon, New York City, for plaintiff; Janet P. Kane, Ronald J. Levine, New York City, of counsel.

Darby & Darby, P.C., New York City, for defendant; William F. Dudine, Jr., New York City, of counsel.

OPINION

GOETTEL, District Judge.

Plaintiff Barry Kieselstein-Cord is the designer of two belt buckles called the Winchester Buckle and the Vaquero Buckle, copies of which he alleges defendant Accessories By Pearl, Inc. has made, sold, distributed, and/or advertised. In this suit for copyright infringement, trademark infringement, and unfair competition, plaintiff has moved for a preliminary injunction and both parties have moved for summary judgment on the copyright claims. After evidentiary hearings on those motions, the Court denies plaintiff's motion for a preliminary injunction or summary judgment and grants defendant's motion for summary judgment. ¹

Plaintiff's buckles are both made of silver, or other precious metal. The Vaquero Buckle is roughly rectangular, with rounded corners, a sculpted surface, and a rectangular cut-out at one end for the belt attachment. It has several surface levels, giving the appearance of two grooves cut across one corner and another at the diagonally opposite corner. The Winchester Buckle is somewhat more irregularly shaped, also with a rectangular cut-out for the belt attachment. There is a tapered, wavy groove cut where the tongue of the buckle would fit and a smaller (almost imperceptible) separate level at a corner near the belt. Defendant's buckles appear to be line-for-line copies, but are made of common metal rather than silver.

(Image Omitted)

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Plaintiff has registered a claim to copyright for each buckle: for the Winchester, Registration No. GP-119073, effective August 22, 1977; for the Vaquero, Registration No. VA-43-985, effective March 3, 1980 (after the commencement of this action). Defendant admits to copying and selling its copies of the Vaquero and to selling copies of the Winchester. Thus, on the questions of copyright infringement of the Vaquero Buckle and the Winchester Buckle, there remain only the legal issues of the validity of the copyrights and the adequacy of the notice under the copyright statutes.

During expedited discovery and the evidentiary hearings on the copyright claims, defendant has been restrained from continuing to sell or distribute the two buckles by a stipulation regarding the Winchester copies and a temporary restraining order regarding the Vaquero copies. The hearings on the copyright claims are complete, and, since there is "no genuine issue as to any material fact," Fed.R.Civ.P. 56(c), the Court is in a position to rule on the summary judgment motions. Hence, it is unnecessary to consider separately the motion for a preliminary injunction.

The threshold question in determining if plaintiff has valid copyright in the Winchester Buckle and the Vaquero Buckle is whether these belt buckles are copyrightable subject matter. We begin with a presumption that these belt buckles are copyrightable, since the Copyright Office registered plaintiff's claims to copyright. Under both the Copyright Act of 1909 ("1909 Act") and the Copyright Act of 1976 ("1976 Act"), registration by the Copyright Office is prima facie evidence of copyrightability, as well as of the information contained in the registration certificate. 1909 Act, 17 U.S.C. s 209 (1976) (repealed by 1976 Act); 1976 Act, 17 U.S.C. s 410(c) (Supp. I 1977). This presumption is not conclusive, however; it merely shifts the burden of proof. H.R.Rep. No. 1476, 94th Cong., 2d Sess. 157 (1976), reprinted in (1976) U.S.Code Cong. & Admin.News, pp. 5659, 5773. Despite this initial judicial deference to the expertise of the Copyright Office, its decisions are subject to review by the courts. Bailie v. Fisher, 258 F.2d 425 (D.C.Cir.1958).

Under the two statutes and the regulations promulgated thereunder, as well as under the relevant case law, the Winchester Buckle and the Vaquero Buckle are not copyrightable subject matter. Although plaintiff asserts that the buckles are jewelry or sculpture, they appear to be primarily belt buckles. Belt buckles are utilitarian objects designed to fasten belts and thus hold up or hold in a dress, skirt, or pants. Like most utilitarian objects, particularly those worn or carried on the person or used in the home, belt buckles may also be decorative.

A substantial body of law has developed on the subject of the copyrightability of utilitarian objects. Copyright protection was originally granted only to authors of maps, charts, and books and was not expanded to include three-dimensional works of art until 1870. Mazer v. Stein, 347 U.S. 201, 208-09, 74 S.Ct. 460, 465-466, 98 L.Ed. 630 (1954). Although the Copyright Office interpreted "works of art" broadly enough to include objects with utilitarian aspects, id., at 211-13, 74 S.Ct. at 467-468, some courts did not. Id. at 203, 74 S.Ct. at 462. The Supreme Court, in Mazer v. Stein, supra, settled the issue, holding that the use or intended use of statuettes of dancing figures, which were otherwise eligible for copyright, as bases for table lamps did not bar or invalidate their registration. The Court's reasoning involved two steps: first, the holding that the statuettes were independently copyrightable as works of art, id. at 214, 74 S.Ct. at 468; and second, the holding that their use as lamp bases did not destroy their copyrightability.

The regulations adopted by the Copyright Office in the mid-1950's and modified in 1959 were an attempt to retain and refine the Mazer distinction between the work of art and its incorporation in a useful object such as a lamp. H.R.Rep. No. 1476, 94th Cong., 2d Sess. 54-55 (1976), reprinted in (1976) U.S.Code Cong. & Admin.News, pp.

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5659, 5668. The regulations on works of art ² permitted the copyrighting of "works of artistic craftsmanship" regardless of the "intention of the author as to the use of the work." 37 C.F.R. s 202.10(a), (b). The regulations required, however, that the artistic features incorporated in the utilitarian object be separately identifiable and "capable of existing independently as a work of art." Id. s 202.10(c).

The requirement of separability and capability of independent existence for the artistic features to be copyrighted was emphasized in the principal case that treats extensively the question of copyrightability of utilitarian objects. The court in Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C.Cir.1978), cert. denied, 440 U.S. 908, 99 S.Ct. 1217, 59 L.Ed.2d 456 (1979), held that lighting fixtures designed with unusual elliptically shaped housings were not eligible for copyright protection as works of art because there were no separately identifiable artistic elements. The court noted that Congress, in its most recent pronouncement on the issue in considering the 1976 Act, unequivocally found ineligible for copyright "the overall design or configuration of a utilitarian object, even if it is determined by aesthetic as well as functional considerations." Id. at 804.

The 1976 Act further refined the test for copyrightability of useful articles. It defines the term as follows: "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'." 17 U.S.C. s 101 (Supp. I 1977). In addition, the 1976 Act retains and enacts the separability and independent existence requirement of the 1959 regulations. See id. ³

The Winchester Buckle, which was first issued on September 1, 1976, must be considered under the 1909 Act, the regulations promulgated thereunder, and the relevant case law. The Vaquero Buckle was first issued on June 1, 1978, and thus must be considered under the 1976 Act, which became effective on January 1, 1978. The tests of copyrightability under the two acts appear to be virtually the same, however, since the 1976 Act essentially incorporates the case law and regulations under the 1909 Act.

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Both buckles are uncopyrightable subject matter under either statute because they fail to satisfy the test of separability and independent existence of the artistic features, which is required under both statutes. The Court does not see in these buckles "pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of" the buckles. 17 U.S.C. s 101 (Supp. I 1977); see 37 C.F.R. s 202.10(c) (1977). Nor does plaintiff identify such features. Instead, the simple,...