Eltra Corp. v. Ringer

• Decision Date: 14 June 1978
• Docket Number: No. 77-1188,77-1188
• Citation: 579 F.2d 294
• Parties: , 1978-81 Copr.L.Dec. 25,015 ELTRA CORPORATION, Appellant, v. Barbara A. RINGER, Appellee, International Typographic Compositon Association and Advertising Typographers Association of America, Inc., Amici Curiae.
• Court: U.S. Court of Appeals — Fourth Circuit

Page 294

579 F.2d 294

198 U.S.P.Q. 321, 1978-81 Copr.L.Dec. 25,015

ELTRA CORPORATION, Appellant, v. Barbara A. RINGER, Appellee International Typographic Compositon Association and Advertising Typographers Association of America Inc., Amici Curiae.

No. 77-1188.

United States Court of Appeals Fourth Circuit.

Argued Jan. 9, 1978.

Decided June 14, 1978.

E. Fulton Brylawski, Washington, D. C. (J. Michael Cleary, Robert H. Johnson, Senior Patent Atty., Eltra Corp., Toledo, Ohio, Henry W. Leeds, Mason, Fenwick & Lawrence, Washington, D. C., W. Gibson Harris, Annie Marie Whittemore, McGuire, Woods & Battle, Richmond, Va., on brief), for appellant.

Jon A. Baumgarten, Gen. Counsel, Library of Congress, New York City (Dorothy M. Schrader, Senior Atty., Library of Congress, James H. Simmonds, Arlington, Va., on brief), for appellee.

Hazel, Beckhorn & Hanes, Fairfax, Va. (Cowen, Liebowitz & Latman, New York City, on brief), for amici curiae International Typographic Composition Ass'n and Advertising Typographers Association of America, Inc.

Before WINTER, RUSSELL and WIDENER, Circuit Judges.

DONALD RUSSELL, Circuit Judge:

This appeal involves the application of the Copyright Act. ¹ The appellant is a manufacturer of typesetting equipment. It filed for registration with the Copyright Office a design of an alphabet and other typographical symbols placed on devices used in connection with its equipment. Such symbols are generally known as "typeface designs." ² The design of the appellant had been prepared by a well-known typeface designer, to whom the appellant paid $11,000 for the design. It sought registration of this typeface as a "work of art" under the terms of what was then § 5(g) of the Copyright Act. ³ The Chief of the Examining Division of the Copyright Office refused to register the design, finding that it contained "no elements, either alone or in combination, which can be separately identified as a 'work of art.' " Such refusal represented the final action of the Copyright Office on the proposed registration. Following this rejection, the appellant instituted in the District Court its mandamus action to compel the appellee, the Register of Copyrights, to register its proposed copyright as a "work of art" under § 5(g). ⁴ Both parties made motions for summary judgment. The District Court denied the appellant's motion but granted the appellee's motion for summary judgment and dismissed the action. This appeal followed.

We affirm.

The appellant's right to registration necessarily turns on whether its design submitted for registration qualified as a "work of art" as that term was used in § 5(g). Congress offered no definition of "work of art" in the statute nor is there in the legislative history any clear declaration of Congressional intent in the use of the term. It did replace an earlier phrase, "work of fine arts," used in the predecessor provision of the Act. Obviously, though, the change in phraseology was "deliberately intended as a broader specification than 'works of fine arts' in the (earlier) statute." ⁵ Primarily, it seems to have been adopted in order to eliminate any "(v)erbal distinctions between purely aesthetic articles and useful works of art" ⁶ in the application of the term under the Act. And, in Mazer v. Stein (1954) 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630, the Court gave effect to this obvious intention of the Congress in its new phrasing.

In Mazer "original works of sculpture in the form of human figures of traditional clay model technique" were submitted by a manufacturer for registration as "works of art" under § 5(g) and a certificate of registration was duly issued for such statuettes. The manufacturer then used the statuettes as bases "for table lamps, with electric wiring, sockets and lamp shades attached." ⁷ A rival manufacturer, however, "copied the statuettes, embodied them in lamps and sold them." The first manufacturer sued claiming "infringement of six copyrights for small three-dimensional statuettes of male and female dancing figures made of semi-vitreous china." In affirming a finding of infringement of the copyright covering the statuettes, the Supreme Court relied on "a contemporaneous and long-continued construction of the statutes by the agency charged to administer them that would allow the registration of such a statuette as is in question here," and upheld the statuettes as "works of art" even though they "might also serve a useful purpose" in the manufacture of lamps. ⁸

7. See, Stein v. Mazer (4th Cir. 1953) 204 F.2d 472, 473, Aff'd Mazer v. Stein (1954) 347 U.S. 201, 202-203, 74 S.Ct. 460, 98 L.Ed. 630.

The important fact, which must not be overlooked in analyzing Mazer, is that the Supreme Court in that case was dealing with a statuette, which though incorporated in a commercial article, was capable of existing independently and had itself been registered as a Separate "work of art" under § 5(g). And it was that type of "applied art" which the court found copyrightable under Mazer. And the Copyright Office proceeded to amend its Regulations defining "works of art" under § 5(g) to conform, (§ 202.10(c), 37 C.F.R.):

"(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."

This amended Regulation spelt out a plain distinction and sought to draw a precise line between copyrightable works of applied art and uncopyrighted works of industrial design, as declared in Mazer. And the distinction as expressed in the Regulation, clearly accorded with Congressional intent and understanding, which, after all, is the controlling factor in statutory construction, as demonstrated by the long acquiescence of Congress in the Regulation. ⁹ That this is so is clear from the exhaustive House Report on the 1976 revision of the Copyright Act, wherein the language of Regulation 202.10(c) is quoted and declared to be the proper construction of the phrase "works of art" ¹⁰ as used in § 5(g). Thus, Regulation 202.10(c) represents the consistent construction of § 5(g) by the "agency charged to administer" the Copyright law since the early 1950s, accords with the decision in Mazer, and conforms with the Congressional intent itself in the definition of the term "works of art" in the Act, as shown by Congress' long acquiescence in the construction and, more importantly, by its specific approval as expressed in the House Report on the 1976 revision.

Under Regulation 202.10(c) it is patent that typeface is an industrial design in which the design cannot exist independently and separately as a work of art. Because of this, typeface has never been considered entitled to copyright under the provisions of § 5(g). ¹¹ And the appellant has recognized this because over the years it, along with the others in the trade, has sought repeatedly to induce Congress to amend the law in order to provide copyright protection to typeface. Just as consistently, Congress has refused to grant the protection. The latest refusal was in connection with the 1976 revision. The right to registration is purely statutory and depends on legislative authorization. What Congress has refused to authorize for registration, Courts cannot authorize or require.

The appellant, however, urges that the District Court found that the typeface in this case was a "work of art" and that the definition of that term incorporated in Regulation 202.10(c) was "erroneous." It argues that, having made those findings, the District Court erred in not granting it relief. Simply because some of the District Court's reasoning was erroneous as a matter of law does not require reversal of the decision itself if the Court has reached the correct result. ¹² In this case the District Court did reach the correct result, even though it erred in finding the typeface a "work of art" and in declaring Regulation 202.10(c) of the Copyright Act invalid.

While the principal argument of the appellant is directed to the claim that its work was entitled to registration by the Copyright Office as a "work of art" under § 5(g), it raises the point that the Register of Copyrights is a legislative office and as such may not exercise any executive powers or authority, in particular any power to issue rules and regulations, though there is specific legislative authorization for such exercise of power. Pursuing this line of reasoning, it argues that the Register can legally exercise no power to deny registration to any "writing" or design submitted; that his power is very strictly limited to the receipt, deposit and issuance of a registration certificate. It must be conceded that this contention, which counsel for the appellant first adumbrated in 44 George Washington Law Review 1, represents in effect a belated challenge to the 1909 revision of the Copyright Act and an attempt to confine the Register to the narrow range of duties exercised by him prior to the 1909 Act. In the roughly three-quarters of a century that the 1909 revision has been in effect, however, its constitutional validity has been generally assumed, including the power of the Register to issue rules and regulations. Indeed, the leading case of Mazer v. Stein, supra, proceeded on the assumption that the Register had such power and the decision in that case relied in its result to a substantial extent on the application of a rule issued by the Register under the authorization given him by the 1909 Act. As a matter of fact, counsel for the appellant, in his article in 44 George Washington Law Review admits that on three occasions the Supreme Court has given weight to rulings and interpretations of the 1909...