632 F.2d 989 (2nd Cir. 1980), 1351, Kieselstein-Cord v. Accessories by Pearl, Inc.

Docket Nº:1351, Docket 80-7354.
Citation:632 F.2d 989
Party Name:189 Barry KIESELSTEIN-CORD, Plaintiff-Appellant, v. ACCESSORIES BY PEARL, INC., Defendant-Appellee.
Case Date:September 18, 1980
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 989

632 F.2d 989 (2nd Cir. 1980)


Barry KIESELSTEIN-CORD, Plaintiff-Appellant,


ACCESSORIES BY PEARL, INC., Defendant-Appellee.

No. 1351, Docket 80-7354.

United States Court of Appeals, Second Circuit

September 18, 1980

Argued June 19, 1980.

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Janet P. Kane, New York City (Ronald J. Levine, Phillips, Nizer, Benjamin, Krim & Ballon, New York City, on the brief), for plaintiff-appellant.

William F. Dudine, Jr. (David R. Francescani, Darby & Darby P.C., New York City, on the brief), for defendant-appellee.

Charles R. Reeves, John C. McNett, C. David Emhardt, Woodard, Weikart, Emhardt & Naughton, Indianapolis, Ind., for LaVenta Corporation d/b/a Indiana Metal Craft as amicus curiae.

Before OAKES and VAN GRAAFEILAND, Circuit Judges, and WEINSTEIN, District Judge. [*]

OAKES, Circuit Judge:

This case is on a razor's edge of copyright law. It involves belt buckles, utilitarian objects which as such are not copyrightable. But these are not ordinary buckles; they are sculptured designs cast in precious metals-decorative in nature and used as jewelry is, principally for ornamentation. We say "on a razor's edge" because the case requires us to draw a fine line under applicable copyright law and regulations. Drawing the line in favor of the appellant designer, we uphold the copyrights granted to him by the Copyright Office and reverse the district court's grant of summary judgment, 489 F.Supp. 732, in favor of the appellee, the copier of appellant's designs.


Appellant Barry Kieselstein-Cord designs, manufactures exclusively by handcraftsmanship, and sells fashion accessories. To produce the two buckles in issue here, the "Winchester" and the "Vaquero," he worked from original renderings which he had conceived and sketched. He then carved by hand a waxen prototype of each of the works from which molds were made for casting the objects in gold and silver. Difficult to describe, the buckles are solid sculptured designs, in the words of district court Judge Goettel, "with rounded corners, a sculpted surface, a rectangular cut-out at one end for the belt attachment," and "several surface levels." The Vaquero gives the appearance of two curved grooves running diagonally across one corner of a modified rectangle and a third groove running across the opposite corner. On the Winchester buckle two parallel grooves cut horizontally across the center of a more tapered form, making a curving ridge which is completed by the tongue of the buckle. A smaller single curved groove flows diagonally across the corner above the tongue.

The Vaquero buckle, created in 1978, was part of a series of works that the designer testified was inspired by a book on design of the art nouveau school and the subsequent viewing of related architecture on a trip to Spain. The buckle was registered with the Copyright Office by appellant's counsel on March 3, 1980, with a publication date of June 1, 1978, as "jewelry," although the appellant's contribution was listed on

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the certificate as "original sculpture and design." Explaining why he named the earlier buckle design "Winchester," the designer said that he saw "in (his) mind's eye a correlation between the art nouveau period and the butt of an antique Winchester rifle" and then "pulled these elements together graphically." The registration, which is recorded on a form used for works of art, or models or designs for works of art, specifically describes the nature of the work as "sculpture."

The Winchester buckle in particular has had great success in the marketplace: more than 4,000 belts with Winchester buckles were sold from 1976 to early 1980, and in 1979 sales of the belts amounted to 95% of appellant's more than $300,000 in jewelry sales. A small women's size in silver with "double truncated triangle belt loops" sold, at the time this lawsuit commenced, at wholesale for $147.50 and a larger silver version for men sold at wholesale with loops for $662 and without loops for $465. Lighter-weight men's versions in silver wholesaled for $450 and $295, with and without loops respectively. The gold versions sold at wholesale from $1,200 to $6,000. A shortened version of the belt with the small Winchester buckle is sometimes worn around the neck or elsewhere on the body rather than around the waist. Sales of both buckles were made primarily in high fashion stores and jewelry stores, bringing recognition to appellant as a "designer." This recognition included a 1979 Coty American Fashion Critics' Award for his work in jewelry design as well as election in 1978 to the Council of Fashion Designers of America. Both the Winchester and the Vaquero buckles, donated by appellant after this lawsuit was commenced, have been accepted by the Metropolitan Museum of Art for its permanent collection.

As the court below found, appellee's buckles "appear to be line-for-line copies but are made of common metal rather than" precious metal. Appellee admitted to copying the Vaquero and selling its imitations, and to selling copies of the Winchester. Indeed some of the order blanks of appellee's customers specifically referred to "Barry K Copy," "BK copy," and even "Barry Kieselstein Knock-off." Thus the only legal questions for the court below were whether the articles may be protected under the copyright statutes and, if so, whether the copyrights were adequate under the laws. Having found that the copyrights were invalid-the Winchester under the Copyright Act of 1909, and the Vaquero under the 1976 Act 1-because they "fail(ed) to satisfy the test of separability and independent existence of the artistic features, which is required under both statutes," Judge Goettel did not go on to make a conclusive determination on the further question whether the notice requirements of the acts had been met by appellant. Instead, he found that the Winchester buckle "probably" satisfies the 1909 Act notice requirements, and he reserved the question whether, with respect to the Vaquero buckle, appellant met the notice requirements of the 1976 Act by way of a saving clause that preserves a copyright despite publication without adequate notice, 17 U.S.C. § 405. We therefore only reach the question whether the buckles may be copyrighted.


We commence our discussion by noting that no claim has been made that the appellant's work here in question lacks originality or creativity, elements necessary for copyrighting works of art. See L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir.), cert. denied, 429 U.S. 857, 97 S.Ct. 156, 50 L.Ed.2d 135 (1976); Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951); 1 Nimmer on Copyright §§ 2.01, 2.08(B) (1980). The thrust of appellee's argument, as well as of the court's decision below, is that appellant's buckles are not copyrightable because they are "useful articles" with no "pictorial, graphic, or sculptural features that can be identified separately

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from, and are capable of existing independently of, the utilitarian aspects" of the buckles. The 1976 copyright statute does not provide for the copyrighting of useful articles except to the extent that their designs incorporate artistic features that can be identified separately from the functional elements of the articles. See 17 U.S.C. §§ 101, 102. 2 With respect to this question, the law adopts the language of the longstanding Copyright Office regulations, 37 C.F.R. § 202.10(c) (1977) 3 (revoked Jan. 5, 1978, 43 Fed.Reg. 965, 966 (1978)). The regulations in turn were adopted in the mid-1950's, under the 1909 Act, in an effort to implement the Supreme Court's decision in Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954). See H.R.Rep.No. 1476, 94th Cong., 2d Sess. 54-55 (1976), reprinted in (1976) U.S. Code Cong. & Admin.News, pp. 5659, 5668 (hereinafter cited as House Report ). The Court in Mazer, it will be recalled, upheld the validity of copyrights obtained for statuettes of male and female dancing figures despite the fact that they were intended for use and used as bases for table lamps, with electric wiring, sockets, and lampshades attached. Mazer itself followed a "contemporaneous and long-continued construction" by the Copyright Office of the 1870 and 1874 Acts as well as of the 1909 Act, under which the case was decided. 347 U.S. at 211-13, 74 S.Ct. at 467. As Professor Nimmer points out, however, the Copyright Office's regulations in the mid-1950's that purported to "implement" this decision actually limited the Court's apparent open-ended extension of copyright protection to all aesthetically pleasing useful articles. See 1 Nimmer, supra, § 2.08(B), at 2-88 to 2-89.

Ultimately, as Professor Nimmer concludes, none of the authorities-the Mazer opinion, the old regulations, or the statute-offer any "ready answer to the line-drawing

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problem inherent in delineating the extent of copyright protection available for works of applied art." Id. at 2-89. Congress in the 1976 Act may have somewhat narrowed the sweep of the former regulations by defining a "useful article" as one with "an intrinsic utilitarian function," 17 U.S.C. § 101 (emphasis added), instead of one, in the words of the old regulations, with utility as its "sole intrinsic function," 37 C.F.R. § 202.10(c) (1977) (revoked Jan. 5, 1978, 43 Fed.Reg. 965, 966 (1978)) (emphasis added).

We are left nevertheless with the problem of determining when a pictorial, graphic, or sculptural feature "can be identified separately from, and (is) capable of existing independently of, the utilitarian aspects of the article," 17 U.S.C. § 101. This problem is particularly difficult because, according to the legislative history explored by the court below, such separability may occur either "physically or conceptually," House Report at 55, (1976) U.S.Code Cong. & Admin.News at 5668. As the late Judge Harold Leventhal observed in his concurrence in...

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