Brandir Intern., Inc. v. Cascade Pacific Lumber Co., 828

• Citation: 834 F.2d 1142
• Decision Date: 02 December 1987
• Docket Number: No. 828,D,828
• Parties: 1988 Copr.L.Dec. P 26,200 BRANDIR INTERNATIONAL, INC., Plaintiff-Appellant, v. CASCADE PACIFIC LUMBER CO., d/b/a Columbia Cascade Co., Defendant-Appellee, and David L. Ladd, Register of Copyrights, United States Copyright Office, Third-Party Defendant. ocket 86-6260.
• Court: United States Courts of Appeals. United States Court of Appeals (2nd Circuit)

Page 1142

834 F.2d 1142

1988 Copr.L.Dec. P 26,200

BRANDIR INTERNATIONAL, INC., Plaintiff-Appellant, v. CASCADE PACIFIC LUMBER CO., d/b/a Columbia Cascade Co. Defendant-Appellee and David L. Ladd, Register of Copyrights, United States Copyright Office, Third-Party Defendant.

No. 828, Docket 86-6260.

United States Court of Appeals Second Circuit.

Argued March 2, 1987.

Decided Dec. 2, 1987.

Blum Kaplan, New York City (Lawrence Rosenthal, Laura E. Goldbard, Anita K. Yeung, New York City, of counsel), for plaintiff-appellant.

Fish & Neave, New York City (Donald E. Degling, Susan Progoff, Eric M. Lee, New York City, of counsel), for defendant-appellee.

Before OAKES and WINTER, Circuit Judges, and ZAMPANO, District Judge. ^*

OAKES, Circuit Judge:

In passing the Copyright Act of 1976 Congress attempted to distinguish between protectable "works of applied art" and "industrial designs not subject to copyright protection." See H.R.Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976 U.S.Code Cong. & Admin.News 5659, 5667 (hereinafter H.R.Rep. No. 1476). The courts, however, have had difficulty framing tests by which the fine line establishing what is and what is not copyrightable can be drawn. Once again we are called upon to draw such a line, this time in a case involving the "RIBBON Rack," a bicycle rack made of bent tubing that is said to have originated from a wire sculpture. (A photograph of the rack is contained in the appendix to this opinion.) We are also called upon to determine whether there is any trademark protection available to the manufacturer of the bicycle rack, appellant Brandir International, Inc. The Register of Copyright, named as a third-party defendant under the statute, 17 U.S.C. Sec. 411, but electing not to appear, denied copyrightability. In the subsequent suit brought in the United States District Court for the Southern District of New York, Charles S. Haight, Jr., Judge, the district court granted summary judgment on both the copyright and trademark claims to defendant Cascade Pacific Lumber Co., d/b/a Columbia Cascade Co., manufacturer of a similar bicycle rack. We affirm as to the copyright claim, but reverse and remand as to the trademark claim.

Against the history of copyright protection well set out in the majority opinion in Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 415-18 (2d Cir.1985), and in Denicola, Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles, 67 Minn.L.Rev. 707, 709-17 (1983), Congress adopted the Copyright Act of 1976. The "works of art" classification of the Copyright Act of 1909 was omitted and replaced by reference to "pictorial, graphic, and sculptural works," 17 U.S.C. Sec. 102(a)(5). According to the House Report, the new category was intended to supply "as clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design." H.R.Rep. No. 1476, at 55, U.S.Code Cong. & Admin.News 1976, p. 5668. The statutory definition of "pictorial, graphic, and sculptural works" states that "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." 17 U.S.C. Sec. 101. ¹ The legislative history added gloss on the criteria of separate identity and independent existence in saying:

On the other hand, although 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.

H.R.Rep. No. 1476, at 55, U.S.Code Cong. & Admin.News 1976, p. 5668.

As courts and commentators have come to realize, however, the line Congress attempted to draw between copyrightable art and noncopyrightable design "was neither clear nor new." Denicola, supra, 67 Minn.L.Rev. at 720. One aspect of the distinction that has drawn considerable attention is the reference in the House Report to "physically or conceptually " (emphasis added) separable elements. The District of Columbia Circuit in Esquire, Inc. v. Ringer, 591 F.2d 796, 803-04 (D.C.Cir.1978) (holding outdoor lighting fixtures ineligible for copyright), cert. denied, 440 U.S. 908, 99 S.Ct. 1217, 59 L.Ed.2d 456 (1979), called this an "isolated reference" and gave it no significance. Professor Nimmer, however, seemed to favor the observations of Judge Harold Leventhal in his concurrence in Esquire, who stated that "the overall legislative policy ... sustains the Copyright Office in its effort to distinguish between the instances where the aesthetic element is conceptually severable and the instances where the aesthetic element is inextricably interwoven with the utilitarian aspect of the article." 591 F.2d at 807; see 1 Nimmer on Copyright Sec. 2.08[B] at 2-93 to 2-96.2 (1986). But see Gerber, Book Review, 26 U.C.L.A.L.Rev. 925, 938-43 (1979) (criticizing Professor Nimmer's view on conceptual separability). Looking to the section 101 definition of works of artistic craftsmanship requiring that artistic features be "capable of existing independently of the utilitarian aspects," Professor Nimmer queries whether that requires physical as distinguished from conceptual separability, but answers his query by saying "[t]here is reason to conclude that it does not." See 1 Nimmer on Copyright Sec. 2.08[B] at 2-96.1. In any event, in Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir.1980), this court accepted the idea that copyrightability can adhere in the "conceptual" separation of an artistic element. Indeed, the court went on to find such conceptual separation in reference to ornate belt buckles that could be and were worn separately as jewelry. Kieselstein-Cord was followed in Norris Industries, Inc. v. International Telephone & Telegraph Corp., 696 F.2d 918, 923-24 (11th Cir.), cert. denied, 464 U.S. 818, 104 S.Ct. 78, 78 L.Ed.2d 89 (1983), although there the court upheld the Register's refusal to register automobile wire wheel covers, finding no "conceptually separable" work of art. See also Transworld Mfg. Corp. v. Al Nyman & Sons, Inc., 95 F.R.D. 95 (D.Del.1982) (finding conceptual separability sufficient to support copyright in denying summary judgment on copyrightability of eyeglass display cases).

In Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.1985), a divided panel of this circuit affirmed a district court grant of summary judgment of noncopyrightability of four life-sized, anatomically correct human torso forms. Carol Barnhart distinguished Kieselstein-Cord, but it surely did not overrule it. The distinction made was that the ornamented surfaces of the Kieselstein-Cord belt buckles "were not in any respect required by their utilitarian functions," but the features claimed to be aesthetic or artistic in the Carol Barnhart forms were "inextricably intertwined with the utilitarian feature, the display of clothes." 773 F.2d at 419. But cf. Animal Fair, Inc. v. Amfesco Indus., Inc., 620 F.Supp. 175, 186-88 (D.Minn.1985) (holding bear-paw design conceptually separable from the utilitarian features of a slipper), aff'd mem., 794 F.2d 678 (8th Cir.1986). As Judge Newman's dissent made clear, the Carol Barnhart majority did 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." 773 F.2d at 420.

"Conceptual separability" is thus alive and well, at least in this circuit. The problem, however, is determining exactly what it is and how it is to be applied. Judge Newman's illuminating discussion in dissent in Carol Barnhart, see 773 F.2d at 419-24, proposed a test that aesthetic features are conceptually separable if "the article ... stimulate[s] in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function." Id. at 422. This approach has received favorable endorsement by at least one commentator, W. Patry, Latman's The Copyright Law 43-45 (6th ed. 1986), who calls Judge Newman's test the "temporal displacement" test. It is to be distinguished from other possible ways in which conceptual separability can be tested, including whether the primary use is as a utilitarian article as opposed to an artistic work, whether the aesthetic aspects of the work can be said to be "primary," and whether the article is marketable as art, none of which is very satisfactory. But Judge Newman's test was rejected outright by the majority as "a standard so ethereal as to amount to a 'nontest' that would be extremely difficult, if not impossible, to administer or apply." 773 F.2d at 419 n. 5.

Perhaps the differences between the majority and the dissent in Carol Barnhart might have been resolved had they had before them the Denicola article on Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles, supra. There, Professor Denicola points out that although the Copyright Act of 1976 was an effort " 'to draw as clear a line as possible,' " in truth "there is no line, but merely a spectrum of forms and shapes responsive in varying degrees to utilitarian concerns." 67 Minn.L.Rev. at 741. Denicola argues that "the statutory directive requires a distinction between works of industrial design and works whose origins lie outside the design process, despite the utilitarian environment in which they appear." He views the statutory limitation of...