Esquire, Inc. v. Ringer
| Decision Date | 22 September 1978 |
| Docket Number | No. 76-1732,76-1732 |
| Parties | , 199 U.S.P.Q. 1, 1978-81 Copr.L.Dec. 25,029 ESQUIRE, INC. v. Barbara A. RINGER, Appellant. |
| Court | U.S. Court of Appeals — District of Columbia Circuit |
Donald Etra, Washington, D. C., with whom Earl J. Silbert, U. S. Atty., Irving Jaffe, Acting Asst. Atty. Gen., William Kanter, Atty., Dept. of Justice, Washington, D. C., was on the brief for appellant.
Charles L. Rowe, Chicago, Ill., with whom George A. Arkwright, Arlington, Va., was on the brief for appellee.
Before BAZELON, LEVENTHAL and ROBINSON, Circuit Judges.
Opinion for the Court filed by Circuit Judge BAZELON.
This case presents the question whether the overall shape of certain outdoor lighting fixtures is eligible for copyright as a "work of art." The Register of Copyrights determined that the overall shape or configuration of such articles is not copyrightable. The district court disagreed, and issued a writ of mandamus directing the Register to enter the claim to copyright. Esquire, Inc. v. Ringer, 414 F.Supp. 939 (D.D.C.1976). For the reasons expressed below, we reverse.
Although the issues involved are fairly complex, the facts may be briefly stated. Appellee, Esquire, Inc. (Esquire) submitted three applications to the Copyright Office for registration of what it described as "artistic design(s) for lighting fixture(s)." 1 Photographs accompanying the applications showed stationary outdoor luminaries or floodlights, of contemporary design, with rounded or elliptically-shaped housings. 2 The applications asserted that the designs were eligible for copyright protection as "works of art." 17 U.S.C. § 5(g).
The Register of Copyrights (Register) refused to register Esquire's claims to copyright. The principal reason given was that Copyright Office regulations, specifically 37 C.F.R. § 202.10(c) (1976), preclude registration of the design of a utilitarian article, such as lighting fixtures, "when all of the design elements . . . are directly related to the useful functions of the article. . . . " 3 The fixtures, according to the Register's analysis, did not contain "elements, either alone or in combination, which are capable of independent existence as a copyrightable pictorial, graphic, or sculptural work apart from the utilitarian aspect." 4 Esquire twice requested reconsideration of its copyright applications, 5 and was twice refused. 6
Esquire then filed suit in the district court, seeking a writ of mandamus directing the Register to issue a certificate of copyright for its lighting fixture designs. This time, Esquire met with success. The court, per Judge Gesell, concluded that registration was compelled by Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954), where the Supreme Court upheld the copyright of statuettes intended to be mass-produced for use as table lamp bases. The district court reasoned that to uphold the issuance of the copyrights in Mazer, but deny Esquire's applications, would amount to affording certain copyright privileges to traditional works of art, but not to abstract, modern art forms. The court went on to find that "(t)he forms of the articles here in dispute are clearly art" and concluded that they were "entitled to the same recognition afforded more traditional sculpture." 414 F.Supp. at 941. The court also suggested that registration of Esquire's designs was compelled by prior "interpretative precedent." Id. This appeal followed.
The heart of the controversy in this case involves, in the district court's words, an "elusive semantic dispute" over the applicable regulation, 37 C.F.R. § 202.10(c). We have divided our analysis of this dispute into two parts: Part II considers whether the Register adopted a permissible interpretation of the regulation; Part III, whether the regulation, as interpreted, was properly applied to the facts presented by Esquire's applications. 7
Section 5(g) of the Copyright Act of 1909, 17 U.S.C. § 5(g), indicates that "(w)orks of art; models or designs for works of art" are eligible for copyright. 8 The terse language of the statute is more fully elaborated in regulations drafted by the Register pursuant to Congressional authorization. 9 The provision at issue, 37 C.F.R. § 202.10(c), provides as follows:
(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.
The parties have advanced conflicting interpretations of § 202.10(c). The Register interprets § 202.10(c) to bar copyright registration of the overall shape or configuration of a utilitarian article, no matter how aesthetically pleasing that shape or configuration may be. As support for this interpretation, the Register notes that the regulation limits copyright protection to features of a utilitarian article that "can be identified separately and are capable of existing independently as a work of art." The Register argues that this reading is required to enforce the congressional policy against copyrighting industrial designs, and that it is supported by the continued practice of the Copyright Office and by legislative history.
Esquire on the other hand, interprets § 202.10(c) to allow copyright registration for the overall shape or design of utilitarian articles as long as the shape or design satisfies the requirements appurtenant to works of art originality and creativity. 10 Esquire stresses that the first sentence of § 202.10(c) reads in its entirety, "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." Esquire maintains that it designed its lighting fixtures with the intent of creating "works of modernistic form sculpture," 11 and therefore that their Sole intrinsic function is not utility. Esquire also contends that the language of § 202.10(c) referring to "features . . . which can be identified separately and are capable of existing independently as a work of art" is not inconsistent with its interpretation. In effect, Esquire asserts that the Shape of the lighting fixtures is the "feature" that makes them eligible for copyright as a work of art. Esquire argues that its reading of § 202.10(c) is required by the decisions of the Supreme Court in Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954) and Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 23 S.Ct. 298, 47 L.Ed. 460 (1903).
We conclude that the Register has adopted a reasonable and well-supported interpretation of § 202.10(c).
The Register's interpretation of § 202.10(c) derives from the principle that industrial designs are not eligible for copyright. Congress has repeatedly rejected proposed legislation that would make copyright protection available for consumer or industrial products. 12 Most recently, Congress deleted a proposed section from the Copyright Act of 1976 that would have " create(d) a new limited form of copyright protection for 'original' designs which are clearly a part of a useful article, regardless of whether such designs could stand by themselves, separate from the article itself." 13 In rejecting proposed Title II, Congress noted the administration's concern that to make such designs eligible for copyright would be to create a "new monopoly" 14 having obvious and significant anticompetitive effects. 15 The issues raised by Title II were left for further consideration in "more complete hearings" to follow the enactment of the 1976 Act. 16
In the Register's view, registration of the overall shape or configuration of utilitarian articles would lead to widespread copyright protection for industrial designs. The Register reasons that aesthetic considerations enter into the design of most useful objects. Thus, if overall shape or configuration can qualify as a "work of art," "the whole realm of consumer products garments, toasters, refrigerators, furniture, bathtubs, automobiles, etc. and industrial products designed to have aesthetic appeal subway cars, computers, photocopying machines, typewriters, adding machines, etc. must also qualify as works of art." 17
Considerable weight is to be given to an agency's interpretation of its regulations. "(T)he ultimate criterion is the administrative interpretation, which becomes of controlling weight unless it is plainly erroneous or inconsistent with the regulation." Bowles v. Seminole Rock & Sand Co., 325 U.S. 410, 414, 65 S.Ct. 1215, 1217, 89 L.Ed. 1700 (1945); Accord, Udall v. Tallman, 380 U.S. 1, 16-18, 85 S.Ct. 792, 13 L.Ed.2d 616 (1965); Stein v. Mazer, 204 F.2d 472, 477 (4th Cir. 1953), Aff'd., 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954). This is particularly so if an administrative interpretation relates to a matter within the field of administrative expertise and has been consistently followed for a significant period of time. Southern Mutual Help Ass'n v. Califano, 187 U.S.App.D.C. 307, 574 F.2d 518, 526 (1977). The Register's interpretation of § 202.10(c) reflects both administrative expertise and consistent application.
The regulation in question attempts to define the boundaries between copyrightable "works of art" and noncopyrightable industrial designs. This is an issue of long-standing concern to the Copyright Office, and is clearly a matter in which the Register has considerable expertise. 18
Whether the Register's interpretation has been consistently followed for a significant period of time is somewhat less clear. Since the Copyright...
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