Fabrica Inc. v. El Dorado Corp., s. 81-5406

• Citation: 697 F.2d 890,217 U.S.P.Q. 698
• Decision Date: 28 January 1983
• Docket Number: Nos. 81-5406,80-6085,s. 81-5406
• Parties: , 1983 Copr.L.Dec. P 25,493 FABRICA INCORPORATED, a corporation, Plaintiff-Appellant, v. EL DORADO CORPORATION, a corporation, Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

Page 890

697 F.2d 890

217 U.S.P.Q. 698, 1983 Copr.L.Dec. P 25,493

FABRICA INCORPORATED, a corporation, Plaintiff-Appellant, v. EL DORADO CORPORATION, a corporation, Defendant-Appellee.

Nos. 81-5406, 80-6085.

United States Court of Appeals Ninth Circuit.

Argued and Submitted March 3, 1982.

Decided Jan. 28, 1983.

David S. Romney, Romney, Golant, Disner & Ashen, Beverly Hills, Cal., for plaintiff-appellant.

Ronald W. Reagin, Reagin & King, Los Angeles, Cal., for defendant-appellee.

An Appeal from the United States District Court for the Central District of California.

Before Judges HUG, TANG, and PREGERSON, Circuit Judges.

PREGERSON, Circuit Judge:

Appellant Fabrica sued appellee El Dorado for copyright infringement and unfair competition. The district court granted El Dorado's motion for a directed verdict on the copyright claim. The jury then returned a general verdict in favor of Fabrica on the unfair competition issue. The court, however, entered judgment n.o.v. for El Dorado. Fabrica appeals both the directed verdict and the judgment n.o.v.

We believe that the court correctly directed a verdict in favor of El Dorado on the copyright claim. We conclude, however, that a reasonable jury could have returned a verdict for Fabrica on the unfair competition claim. We therefore affirm in part, reverse in part, and remand for further proceedings.

Background

Fabrica and El Dorado are commercial carpet manufacturers and wholesalers.

Commercial carpeting is customarily marketed by way of "display folders"--books containing carpet samples accompanied by a description of the carpet's technical specifications. Most mills develop a distinctive layout and design for their folders to create a recognizable company style.

Both Fabrica and El Dorado were originally in the residential carpet business. When Fabrica decided to market commercial carpeting, it commissioned the design of a distinctive, high-quality display folder. The folder was covered with simulated white suede, with saddle stitching along the borders and brass tips at the corners. It had a unique fold-out book format featuring a full-page carpet sample on the inside left panel and small carpet samples on the inside right panel. According to both Fabrica and El Dorado, the folder was superior, both in structure and appearance, to any carpet sample folder previously used by a commercial carpet mill.

El Dorado entered the commercial carpet market at about the same time as Fabrica. The evidence showed that El Dorado's vice-president took a Fabrica display folder to a folder manufacturer and instructed him to copy it. Virtually every feature of the Fabrica folder was incorporated into the design of the El Dorado folder; the only difference was in the color of the simulated suede and stitching. El Dorado even copied the placement on the folders of the brand name, company name and address, and showroom locations. Appendix A to this opinion consists of six photographs, each of which compares features of the Fabrica and El Dorado folders.

El Dorado admits the copying but argues that (1) the folders are not entitled to copyright protection as graphic works because they are "useful articles" under the Copyright Act, 17 U.S.C. Sec. 101, and (2) the folders are "functional" and therefore not protected under the principles of unfair competition.

The Copyright Issue

At the close of testimony, the district court granted El Dorado's motion for a directed verdict on the copyright claim. The court ruled as a matter of law that Fabrica's carpet display folders were "useful articles" under the copyright laws, 17 U.S.C. Sec. 101, and therefore not entitled to protection as a "pictorial, graphic and sculptural work" under 17 U.S.C. Sec. 102(a)(5).

A directed verdict is proper if, examining the evidence in the light most favorable to the non-moving party, there is no substantial evidence to support a verdict for that party. Davison v. Pacific Inland Navigation Co., 569 F.2d 507, 509 (9th Cir.1978). The court must draw all reasonable inferences in favor of the non-moving party. Flores v. Pierce, 617 F.2d 1386, 1389 (9th Cir.1980). The court may not direct a verdict simply because it feels that a contrary conclusion would have been more reasonable. Tennant v. Peoria & Pekin Union Railway, 321 U.S. 29, 35, 64 S.Ct. 409, 412, 88 L.Ed. 520 (1944). The same standard is applied when the Court of Appeals reviews the granting of a directed verdict. Marquis v. Chrysler Corp., 577 F.2d 624, 631 (9th Cir.1978).

Fabrica argues that its display folder is a "pictorial, graphic and sculptural work" and therefore qualifies for copyright protection under 17 U.S.C. Sec. 102(a)(5). The types of "pictorial, graphic and sculptural works" that will be accorded copyright protection are described in 17 U.S.C. Sec. 101 as

two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, technical drawings, diagrams and models ....

Such works were not copyrightable at all for a long period of time, but were protected, if at all, by patent. In Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954), however, the Supreme Court ratified a copyright regulation providing for protection of "works of artistic craftsmanship, insofar as their form but not their mechanical or utilitarian aspects are concerned: ..." 37 C.F.R. Sec. 202.10(a) (1959).

After Mazer, in order to prevent the extension of copyright protection to all manner of "useful" industrial products, the Register of Copyrights promulgated the following regulation, which governed until the 1976 Copyright Act went into effect If the sole intrinsic function of an article is its utility, the fact that it 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 existence independently as a work of art, such features will be eligible for registration.

37 C.F.R. 202.10(c) (1959) (emphasis added).

As the district court in the instant case noted, this test was very difficult to apply. Courts struggled to decide whether an article's function was solely utilitarian. If so, copyright protection was denied unless the object's artistic features could be identified separately and exist independently as a work of art. If, however, an object was only partly utilitarian, its artistic features could be copyrighted even if its artistic features could not be identified separately and exist independently. See M. Nimmer, Nimmer on Copyright, Sec. 2.08[B] (1981 ed.).

The 1976 Act changed that approach. The "useful article" limitation to copyright protection afforded graphic works is now contained in 17 U.S.C. Sec. 101:

Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, 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.

Useful articles are defined as

articles 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."

The significant change from the prior law is that the courts need no longer determine whether an article's function is solely utilitarian. Now, if an article has any intrinsic utilitarian function, it can be denied copyright protection except to the extent that its artistic features can be identified separately and are capable of existing independently as a work of art.

The legislative history of the new Copyright Act makes it clear that Congress intended such a result:

[A]lthough the shape of an industrial product may be aesthetically satisfying and valuable, the Committee's intention is not to offer it copyright protection under the bill. Unless the shape of an automobile, airplane, ladies' dress, food processor, television set, or any other industrial product contains some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article, the design would not be copyrighted under the bill. The test of separability and independence from "the utilitarian aspects of the article" does not depend upon the nature of the design--that is, even if the appearance of an article is determined by aesthetic (as opposed to functional) considerations, only elements, if any, which can be identified separately from the useful article as such are copyrightable.

House Report, 1976 U.S.Code Cong. & Ad.News 5668.

In the instant case, the district court concluded that Fabrica's folders, while "graphic works" under Section 101, are useful articles lacking any artistic feature identifiable separately from the utilitarian aspects of the article. On that basis, it directed a verdict in favor of El Dorado. This was a correct result. The folders' usefulness in marketing is their only reason for existence. There is no element of the folders that can be separated out and exist independently of their utilitarian aspects. Even if we were to apply the older more lenient test, the folders must be viewed as "solely" utilitarian. Under the stricter test of the new Act, weighing the evidence in the light most favorable to Fabrica, it is clear as a matter of law that the folders cannot be accorded copyright protection.

We reject Fabrica's assertion that its folders should be protected because they are advertising and promotional materials.

                It is true that "a pictorial work is no less a subject of

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