Norris Industries, Inc. v. International Tel. & Tel. Corp.

• Decision Date: 24 January 1983
• Docket Number: No. 81-5915,81-5915
• Citation: 696 F.2d 918
• Parties: , 1983 Copr.L.Dec. P 25,491 NORRIS INDUSTRIES, INC., Plaintiff-Appellant, v. INTERNATIONAL TELEPHONE AND TELEGRAPH CORPORATION and David L. Ladd, Register of Copyrights, Defendants-Appellees.
• Court: U.S. Court of Appeals — Eleventh Circuit

Page 918

696 F.2d 918

217 U.S.P.Q. 226, 1983 Copr.L.Dec. P 25,491

NORRIS INDUSTRIES, INC., Plaintiff-Appellant, v. INTERNATIONAL TELEPHONE AND TELEGRAPH CORPORATION and David L. Ladd, Register of Copyrights, Defendants-Appellees.

No. 81-5915.

United States Court of Appeals Eleventh Circuit.

Jan. 24, 1983.

Ervin, Varn, Jacobs, Odom & Kitchen, Wilfred C. Varn, Tallahassee, Fla., Harness, Dickey & Pierce, Joseph R. Papp, Charles H. Blair, Sohn A. Sinclair, Birmingham, Mich., for plaintiff-appellant.

Pennie & Edmonds, Robert M. Kunstadt, John E. Kidd, Joseph J.C. Ranalli, New York City, Robert J. Kelly, Tallahassee, Fla., Ronald W. Alice, New York City, for defendants-appellees.

Appeals from the United States District Court for the Northern District of Florida.

Before RONEY and HATCHETT, Circuit Judges, and WISDOM, ^* Senior Circuit Judge.

RONEY, Circuit Judge:

This case involves whether wire-spoked wheel covers for automobiles are entitled to copyright protection as opposed to industrial design or some other trade protection. The district court in this copyright infringement suit concluded on summary judgment that the wheel covers are not entitled to copyright protection because they are useful articles without separable features. We affirm.

There are essentially two issues in the case: (1) whether the wheel covers are useful or ornamental and (2) whether, even if useful, there is separable art work that deserves copyright protection. The difference between the copyright protection sought by the plaintiff and protection as an industrial design primarily lies in the length of time and scope of protection given. ¹ That the wheel covers might be protected under some other law is not before this panel. The sole issue is whether the wheel covers as presented for registration are copyrightable.

Background

In 1975 Norris Industries, Inc. created a design for a wheel cover that simulates a wire wheel and applied to the Copyright Office for copyright registration. The first two applications were rejected. Norris reapplied and pointed out a district court decision that found the design of a lighting fixture to be copyrightable. Esquire, Inc. v. Ringer, 414 F.Supp. 939 (D.D.C.1976). The Copyright Office "in line with [its] policy of resolving doubtful cases in favor of registration" then granted copyright registration. In 1977 Norris created a second design. Four applications for copyright registration were submitted and rejected. During this process the D.C.Circuit Court of Appeals reversed Esquire. Esquire, Inc. v. Ringer, 192 U.S.App.D.C. 187, 591 F.2d 796 (1978), cert. denied, 440 U.S. 908, 99 S.Ct. 1217, 59 L.Ed.2d 456 (1979). The second wheel cover was rejected by the Copyright Office as a utilitarian article without separable copyrightable aspects on the authority of Esquire. ²

Late in 1980 Norris instituted suit in the Northern District of Florida against International Telephone and Telegraph Corporation (ITT), alleging copyright and patent infringement. Pursuant to 17 U.S.C.A. Sec. 411(a), the Register of Copyrights joined in the suit as a party defendant for the purpose of contesting registrability. ³ ITT then filed suit against Norris in a federal court in California for declaratory judgment as to the validity of Norris' copyrights and patents. On Norris' motion, the California suit was transferred to Florida, ⁴ and the two suits were consolidated. ⁵ Both ITT and the Register moved for partial summary judgment on the copyright counts. The district court granted the two motions and declared both the registered and the unregistered copyrights invalid as a matter of law.

Applicable Copyright Law

As an initial skirmish the parties disagree on whether the Copyright Act of 1909, ch. 320, 35 Stat. 1075, as amended, or the Copyright Act of 1976, 17 U.S.C.A. Secs. 101-810, is applicable to the instant case although we are not sure it makes any difference. Norris' first registered copyright was granted before the January 1, 1978 effective date of the 1976 Act and therefore the 1909 Act applied. Norris also applied for registration of the second wheel cover before January 1, 1978. The transitional and supplementary provisions of the 1976 Act provide that registration shall be made in accordance with the Act as it existed on December 31, 1977, where the deposit application and fee were received before January 1, 1978. Copyright Act of 1976, P.L. No. 94-553, Sec. 109, 90 Stat. 2600 (1976). Therefore, we agree with Norris that the Copyright Act of 1909 applies to questions of registrability.

In any event, the legislative history of the Act of 1976 indicates that Congress endorsed the practice of the Copyright Office under the Act of 1909 as it related to registrability of utilitarian articles. The express congressional intent was merely to clarify the statutory distinction between works of applied art eligible for copyright protection and industrial designs ineligible for protection. H.R.Rep. No. 94-1476, 94th Cong. 2d Sess. 54-55, reprinted in [1976] U.S.Code Cong. & Ad.News 5659, 5667-68. See also Esquire, Inc. v. Ringer, 591 F.2d at 803 (1976 Act and its legislative history express congressional understanding of scope of protection for utilitarian articles). The language from existing guidelines and regulations of the Copyright Office was incorporated into the 1976 Act. Under this Act the definition of useful article is "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information" and includes articles that are normally a part of a useful article. 17 U.S.C.A. Sec. 101. The design of a useful article qualifies as a copyrightable pictorial, graphic, or sculptural work only to the extent that the design incorporates features that "can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." Id.

Because Congress intended to codify the existing practice of the Copyright Office with respect to the dichotomy between ornamental and useful articles, the 1976 Act and its legislative history are useful aids in interpreting the 1909 Act and regulations adopted pursuant to it. A further reason for noting the identity of treatment of this matter under the 1909 Act and the 1976 Act is to explain why cases arising under the 1976 Act are relevant to this case arising under the 1909 Act.

Important to this litigation is the intended scope of the copyright laws. Congressional authority to provide authors copyright protection for their writings is found in Article I, Section 8 of the Constitution. Without extending copyright protection to the limits of the Constitution, Congress has sought a flexible definition of writings. The 1909 Act gave content to the phrase "writings of an author," Copyright Act, ch. 391, Sec. 4, 61 Stat. 654 (1947), by setting out classes of works eligible for registration including "works of art." Id. Sec. 5(g), 61 Stat. 654 (1947). ⁶

Under guidelines established by the Copyright Office, a distinction was made between ornamental and useful articles. ⁷ Ornamental articles are "all decorative articles designed primarily to beautify, embellish, or adorn," Compendium of Copyright Office Practices, 2.8.1.I.b.1., and if the requirements of originality and creativity are satisfied, are entitled to registration. Useful articles are "designed primarily to serve a utilitarian function," id. 2.8.1.I.b.2., and are not entitled to registration, except for features "which can be identified separately and are capable of existing independently as a work of art." 37 C.F.R. Sec. 202.10(c) (1977) [superseded]. As indicated in the above discussion, these regulations were effectively codified in the 1976 Act. 17 U.S.C.A. Sec. 101.

Discussion

Norris contends first that its wheel covers are ornamental articles, not useful, designed to beautify, embellish, and adorn the wheels of automobiles. The district court held that the wheel covers are utilitarian articles serving as hubcaps to protect lugnuts, brakes, wheels, and axles from damage and corrosion, as had been determined by the Register in rejecting the copyright application. ⁸ The court added that the wheel covers were designed to be part of an automobile, which is a useful article.

The district court properly gave some deference to the expertise of the Register in its decision. The Supreme Court has accorded deference to the Register's drawing of the line between ornamental and useful articles. In Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954), the seminal case on the copyrightability of works of art used in industry, the Court referred to the agency's construction of the statute in its regulation permitting registration of works of artistic craftsmanship only as to form and not as to mechanical or utilitarian aspects. Id. at 212-13, 74 S.Ct. at 467-68. The District of Columbia Circuit has noted the considerable expertise of the Register in defining the boundaries between copyrightable works of art and noncopyrightable industrial designs and has accorded considerable weight to the refusal of registration. See Esquire, Inc. v. Ringer, 591 F.2d at 801. The Fourth Circuit has also expressly deferred to the Register's view on the registrability of utilitarian articles. See Eltra Corp. v. Ringer, 579 F.2d 294, 297-98 (4th Cir.1978). The expertise relied on is not technical expertise in the use of the article submitted for registration but expertise in the interpretation of the law and its application to the facts presented by the copyright application. The Copyright Office has been concerned with the distinction between copyrightable and noncopyrightable works of art since the Copyright Act of 1870 characterized copyrightable subject matter as works of fine art. See Mazer v. Stein, 347 U.S. at 209-13, 74 S.Ct. at 466-68.

These determinations are routinely made by the Register and are unquestionably related to...