Mazer v. Stein, No. 228

• Court: United States Supreme Court
• Writing for the Court: REED
• Citation: 98 L.Ed. 630,74 S.Ct. 460,347 U.S. 201
• Decision Date: 08 March 1954
• Docket Number: No. 228
• Parties: MAZER et al. v. STEIN et al

347 U.S. 201 74 S.Ct. 460 98 L.Ed. 630 MAZER et al.

v.

STEIN et al.

No. 228. Argued Dec. 3, 1953. March 8, 1954. Rehearing Denied April 12, 1954.

See 347 U.S. 949, 74 S.Ct. 637.

Messrs. Max R. Kraus and Robert L. Kahn, Chicago, Ill., for petitioners.

Mr.

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George E. Frost, Chicago, Ill. (Messrs. William Freeman, Chicago, Ill. and Charles F. Barber, Washington, D.C., on the brief), for respondents.

Mr. Benjamin Forman, New York City, for the Register of Copyrights. Amicus curiae by special leave of Court.

Mr. Justice REED delivered the opinion of the Court.

This case involves the validity of copyrights obtained by respondents for statuettes of male and female dancing figures made of semivitreous china. The controversy centers around the fact that although copyrighted as 'works of art,' the statuettes were intended for use and used as bases for table lamps, with electric wiring, sockets and lamp shades attached.

Respondents are partners in the manufacture and sale of electric lamps. One of the respondents created original works of sculpture in the form of human figures by traditional clay-model technique. From this model, a production mold for casting copies was made. The resulting statuettes, without any lamp components added, were submitted by the respondents to the Copyright Office for registration as 'works of art' or reproductions thereof under § 5(g) or § 5(h) of the copyright law,¹ and certifi-

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cates of registration issued. Sales (publication in accordance with the statute) as fully equipped lamps preceded the applications for copyright registration of the statuettes. 17 U.S.C. (Supp. V, 1952) §§ 10, 11, 13, 209, 17 U.S.C.A. §§ 10, 11, 13, 209; Rules and Regulations, 37 CFR, 1949, §§ 202.8 and 202.9. Thereafter, the statuettes were sold in quantity throughout the country both as lamp bases and as statuettes. The sales in lamp form accounted for all but an insignificant portion of respondents' sales.

Petitioners are partners and, like repondents, make and sell lamps. Without authorization, they copied the statuettes, embodied them in lamps and sold them.

The instant case is one in a series of reported suits brought by respondents against various alleged infringers of the copyrights, all presenting the same or a similar question.² Because of conflicting decisions,³ we granted certiorari. 346 U.S. 811, 74 S.Ct. 49. In the present case respond-

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ents sued petitioners for infringement in Maryland. Stein v. Mazer, D.C., 111 F.Supp. 359. Following the Expert decision and rejecting the reasoning of the District Court in the Rosenthal opinion, both referred to in the preceding note, the District Court dismissed the complaint. The Court of Appeals reversed and held the copyrights valid. Stein v. Mazer, 4 Cir., 204 F.2d 472.⁴ It said: 'A subsequent utilization of a work of art in an article of manufacture in no way affects the right of the copyright owner to be protected against infringement of the work of art itself.' 204 F.2d at page 477.

Petitioners, charged by the present complaint with infringement of respondents' copyrights of reproductions of their works of art, seek here a reversal of the Court of Appeals decree upholding the copyrights. Petitioners in their petition for certiorari present a single question:

'Can statuettes be protected in the United States by copyright when the copyright applicant intended primarily to use the statuettes in the form of lamp

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bases to be made and sold in quantity and carried the intentions into effect?

'Stripped down to its essentials, the question presented is: Can a lamp manufacturer copyright his lamp bases?'

The first paragraph accurately summarizes the issue. The last gives it a quirk that unjustifiably, we think, broadens the controversy. The case requires an answer, not as to a manufacturer's right to register a lamp base but as to an artist's right to copyright a work of art intended to be reproduced for lamp bases. As petitioners say in their brief, their contention 'questions the validity of the copyright based upon the actions of respondents.' Petitioners question the validity of a copyright of a work of art for 'mass' production. 'Reproduction of a work of art' does not mean to them unlimited reproduction. Their position is that a copyright does not cover industrial reproduction of the protected article. Thus their reply brief states:

'When an artist becomes a manufacturer or a designer for a manufacturer he is subject to the limitations of design patents and deserves no more consideration than any other manufacturer or designer.'

It is not the right to copyright an article that could have utility under § 5(g) and (h), note 1, supra, that petitioners oppose. Their brief accepts the copyright-ability of the great carved golden saltcellar of Cellini but adds:

'If, however, Cellini designed and manufactured this item in quantity so that the general public could have salt cellars, then an entirely different conclusion would be reached. In such case, the salt cellar becomes an article of manufacture having utility in addition to its ornamental value and would therefore have to be protected by design patent.'

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It is publication as a lamp and registration as a statue to gain a monopoly in manufacture that they assert is such a misuse of copyright as to make the registration invalid.

No unfair competition question is presented. The constitutional power of Congress to confer copyright protection on works of art or their reproductions is not questioned.⁵ Petitioners assume, as Congress has in its

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enactments and as do we, that the constitutional clause empowering legislation 'To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their

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respective Writings and Discoveries', Art. I, § 8, cl. 8, includes within the term 'Authors' the creator of a picture or a statue. The Court's consideration will be limited to the question presented by the petition for the writ of certiorari.⁶ In recent years the question as to utilitarian use of copyrighted articles has been much discussed.⁷

In answering that issue, a review of the development of copyright coverage will make clear the purpose of the Congress in its copyright legislation. In 1790 the First Congress conferred a copyright on 'authors of any map, chart, book or books already printed'.⁸ Later, designing, engraving and etching were included;⁹ in 1831 musical

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composition;¹⁰ dramatic compositions in 1856;¹¹ and photographs and negatives thereof in 1865.¹²

The Act of 1870 defined copyrightable subject matter as:

'* * * any book, map, chart, dramatic or musical composition, engraving, cut, print, or photograph or negative thereof, or of a painting, drawing, chromo, statute, statuary, and of models or designs intended to be perfected as works of the fine arts'. (Emphasis supplied.)¹³

The italicized part added three-dimensional work of art to what had been protected previously.¹⁴ In 1909 Con-

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gress again enlarged the scope of the copyright statute.¹⁵ The new Act provided in § 4:

'That the works for which copyright may be secured under this Act shall include all the writings of an author.'¹⁶

Some writers interpret this section as being coextensive with the constitutional grant,¹⁷ but the House Report, while inconclusive, indicates that it was 'declaratory of existing law' only.¹⁸ Section 5 relating to classes of writings in 1909 read as shown in the margin with subsequent additions not material to this deci-

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sion.¹⁹ Significant for our purposes was the deletion of the fine-arts clause of the 1870 Act.²⁰ Verbal distinctions between purely aesthetic articles and useful works of art ended insofar as the statutory copyright language is concerned.²¹

The practice of the Copyright Office, under the 1870 and 1874 Acts and before the 1909 Act, was to allow registration 'as works of the fine arts' of articles of the same character as those of respondents now under challenge. Seven examples appear in the Government's

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brief amicus curiae.²² In 1910, interpreting the 1909 Act, the pertinent Copyright Regulations read as shown in the margin.²³ Because, as explained by the Government, this regulation 'made no reference to articles which might fairly be considered works of art although they might also serve a useful purpose,' it was reworded in 1917 as shown below.²⁴ The amicus brief gives sixty examples selected at five-year intervals, 1912—1952, said to be typical of registrations of works of art possessing utilitarian aspects.²⁵ The current pertinent regulation, published in 37 CFR, 1949, § 202.8, reads thus:

'Works of art (Class G)—(a)—In General. This class includes works of artistic craftsmanship, in so far as their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry,

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enamels, glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings, drawings and sculpture. * * *'

So we have a contemporaneous and longcontinued 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.²⁶

This Court once essayed to fix the limits of the fine arts.²⁷ That effort need not be appraised in relation to this copyright issue. It is clear Congress intended the scope of the copyright statute to include more than the traditional fine arts. Herbert Putnam, Esq., then Librarian of Congress and active in the movement to amend the copyright laws, told the joint meeting of the House and Senate Committees:

'The term 'works of art' is deliberately intended as a broader specification than 'works of the fine arts' in the present statute with the idea that there is subject-matter (for instance, of applied design, not yet within the province...