Pivot Point Int'l v. Charlene Products ( 2004 )


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  •                                 In the
    United States Court of Appeals
    For the Seventh Circuit
    ____________
    Nos. 01-3888 & 02-1152
    PIVOT POINT INTERNATIONAL, INCORPORATED,
    Plaintiff-Appellant, Cross-Appellee,
    v.
    CHARLENE PRODUCTS, INCORPORATED and PETER YAU,
    Defendants-Appellees, Cross-Appellants.
    ____________
    Appeals from the United States District Court
    for the Northern District of Illinois, Eastern Division.
    1
    No. 90 C 6933—Frank H. Easterbrook, Circuit Judge.
    ____________
    ARGUED JUNE 6, 2003—DECIDED JUNE 25, 2004
    ____________
    Before RIPPLE, KANNE and DIANE P. WOOD, Circuit Judges.
    RIPPLE, Circuit Judge. Pivot Point International, Inc.
    (“Pivot Point”), brought this cause of action against
    Charlene Products, Inc., and its president Peter Yau (col-
    1
    United States Circuit Judge for the Seventh Circuit, sitting by
    designation.
    2                                    Nos. 01-3888 & 02-1152
    lectively “Charlene”), for copyright infringement pursuant
    to 17 U.S.C. § 501(b). The district court granted summary
    judgment for the defendants on the ground that the copied
    subject matter, a mannequin head, was not copyrightable
    under the Copyright Act of 1976 (“1976 Act”), 17 U.S.C.
    § 101 et seq. For the reasons set forth in the following
    opinion, we reverse the judgment of the district court
    and remand the case for proceedings consistent with this
    opinion.
    I
    BACKGROUND
    A. Facts
    Pivot Point develops and markets educational techniques
    and tools for the hair design industry. It was founded in
    1965 by Leo Passage, an internationally renowned hair de-
    signer. One aspect of Pivot Point’s business is the design
    and development of mannequin heads, “slip-ons” (facial
    forms that slip over a mannequin head) and component hair
    pieces.
    In the mid-1980s, Passage desired to develop a mannequin
    that would imitate the “hungry look” of high-fashion,
    runway models. Passage believed that such a mannequin
    could be marketed as a premium item to cutting-edge hair-
    stylists and to stylists involved in hair design competitions.
    Passage then worked with a German artist named Horst
    Heerlein to create an original sculpture of a female human
    head. Although Passage discussed his vision with Heerlein,
    Passage did not give Heerlein any specific dimensional
    requirements. From Passage’s description, Heerlein created
    a sculpture in plaster entitled “Mara.”
    Nos. 01-3888 & 02-1152                                       3
    Wax molds of Mara were made and sent to Pivot Point’s
    manufacturer in Hong Kong. The manufacturer created
    exact reproductions of Mara in polyvinyl chloride (“PVC”).
    The manufacturer filled the PVC form with a liquid that
    expands and hardens into foam. The process of creating the
    Mara sculpture and of developing the mannequin based on
    the sculpture took approximately eighteen months.
    In February of 1988, when Pivot Point first inspected the
    PVC forms of Mara, it discovered that the mannequin’s
    hairline had been etched too high on the forehead. The
    manufacturer corrected the mistake by adding a second,
    lower hairline. Although the first, higher hairline was vis-
    ible upon inspection, it was covered with implanted hair.
    The early PVC reproductions of Mara, and Pivot Point’s first
    shipment of the mannequins in May of 1988, possessed the
    double hairlines.
    About the same time that it received its first shipment of
    mannequins, Pivot Point obtained a copyright registration
    for the design of Mara, specifically the bareheaded female
    human head with no makeup or hair. Heerlein assigned all
    of his rights in the Mara sculpture to Pivot Point. Pivot Point
    displayed the copyright notice in the name of Pivot Point on
    each mannequin.
    Pivot Point enjoyed great success with its new mannequin.
    To respond to customer demand, Pivot Point began market-
    ing the Mara mannequin with different types and lengths of
    hair, different skin tones and variations in makeup; how-
    ever, no alterations were made to the facial features of the
    mannequin. For customer ease in identification, Pivot Point
    changed the name of the mannequin based on its hair and
    skin color; for instance, a Mara mannequin implanted with
    yak hair was called “Sonja,” and the Mara mannequin
    implanted with blonde hair was called “Karin.”
    4                                      Nos. 01-3888 & 02-1152
    At a trade show in 1989, Charlene, a wholesaler of beauty
    2
    products founded by Mr. Yau, displayed its own “Liza”
    mannequin, which was very close in appearance to Pivot
    Point’s Mara. In addition to the strikingly similar facial
    features, Liza also exhibited a double hairline that the early
    Mara mannequins possessed.
    On September 24, 1989, Pivot Point noticed Charlene for
    copyright infringement. When Charlene refused to stop
    importing and selling the Liza mannequin, Pivot Point filed
    3
    this action.
    B. District Court Proceedings
    Pivot Point filed a multi-count complaint in district court
    against Charlene. It alleged violations of federal copyright
    law as well as state-law claims; Charlene both answered the
    complaint and counterclaimed. After extensive discovery,
    Pivot Point filed a comprehensive motion for summary
    judgment on its complaint and Charlene’s counterclaims.
    Charlene filed several cross-motions for summary judgment
    as well. The district court tentatively ruled on these motions
    in July 2001 and issued a final ruling in October 2001.
    1.   Merits
    In its opinion, the district court stated that “[t]he principal
    dispute is whether a human mannequin head is copy-
    rightable subject matter. If it is, then there must be a trial on
    2
    Mr. Yau was not unfamiliar with Pivot Point. Shortly before
    founding Charlene Products in 1985, Mr. Yau had worked for
    Pivot Point.
    3
    Charlene eventually obtained a copyright registration for its
    Liza mannequin.
    Nos. 01-3888 & 02-1152                                        5
    the question whether Liza is a knock off of Mara.” R.401 at
    1. The district court explained that, although sculptural
    works are copyrightable under 17 U.S.C. § 102(a)(5), sculp-
    tures that may be copyrighted are limited by the language
    of 17 U.S.C. § 101, which provides in relevant part:
    Such works shall include works of artistic craftsmanship
    insofar as their form but not their mechanical or utilitar-
    ian aspects are concerned; 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.
    According to the district court, there was no question that
    Mara was a sculpture. However, in the district court’s view,
    the sculpture served utilitarian ends. “Students in beauty
    schools practice styling hair on Mara’s head and may
    practice other skills by applying makeup to Mara’s eyes,
    lips, and cheeks. The parties dispute which functions are
    primary.” R.401 at 2.
    The district court then explored whether the artistic and
    utilitarian aspects of Mara were “separable” for purposes of
    the piece’s copyrightability: “The statutory separability
    requirement confines copyright protection to those aspects
    of the design that exist apart from its utilitarian value, and
    that could be removed without reducing the usefulness of
    the item.” 
    Id. at 3.
    The district court observed that drawing
    this line is particularly troublesome.
    The statute, continued the district court, is generally
    recognized to suggest two types of separability: physical
    separability and conceptual separability. The district court
    6                                    Nos. 01-3888 & 02-1152
    explained that physical separability occurs when the orna-
    mental nature of the object can be physically removed from
    the object and that
    [c]onceptual separability differs from physical separa-
    bility by asking not whether the features to be copy-
    righted could be sliced off for separate display, but
    whether one can conceive of this process. Relying on
    a comment in the House Report on the 1976 amend-
    ments, the second circuit in Kieselstein-Cord [v.
    Accessories by Pearl, Inc., 
    632 F.2d 989
    (2d Cir. 1980),]
    purported to adopt conceptual separability as the ex-
    clusive test (632 F.2d at 992, contrasting that approach
    with Esquire [v. Ringer, 
    591 F.2d 796
    (D.C. Cir. 1978)],
    which opted for physical 
    separability, 591 F.2d at 803-04
    ). Why a court should repair to the legislative
    history is unclear; the second circuit did not identify
    any ambiguity in § 101 that needed to be resolved, and
    a statement in the House Report that what appears
    on the face of the statutory text to be two requirements
    (physical and conceptual separability) should be ad-
    ministered as just one is not a proposition that in to-
    day’s legal climate can be indulged. The Supreme Court
    does not permit the use of legislative history to alter, as
    opposed to elucidate, a statutory text.
    
    Id. at 4.
       Despite this lack of statutory moorings, the district court
    nevertheless reviewed the differing formulations for con-
    ceptual separability and determined that the definition
    proposed by Professor Paul Goldstein was the best one: “a
    pictorial, graphic or sculptural feature incorporated in the
    design of a useful article is conceptually separable if it can
    stand on its own as work of art traditionally conceived, and
    if the useful article in which it is embodied would be equal-
    ly useful without it.” R.401 at 5 (quoting 1 Paul Goldstein,
    Nos. 01-3888 & 02-1152                                        7
    Copyright: Principles, Law & Practice § 2.5.3, at 109 (1989)).
    The district court believed that the strength of this definition
    “comes from the fact that it differs little, if at all, from the
    test of physical separability embraced by the D.C. Circuit in
    Esquire and by the majority in Carol Barnhart [Inc., v. Econ-
    omy Cover Corp., 
    773 F.2d 411
    , 418 (2d Cir. 1985)].” 
    Id. Applying this
    test led the district court to conclude that
    Mara cannot be copyrighted because, even though one
    can conceive of Mara as a sculpture displayed as art, it
    would not be equally useful if the features that Pivot
    Point want to copyright were removed. So long as a
    utilitarian function is makeup tutoring and practice and
    the fact that Pivot Points sells Mara without eye or lip
    coloring shows that this is a function even if not, in
    Pivot Point’s view, the “primary” one—the utilitarian
    value would be diminished by removing the aesthetic
    features that Pivot Point wants to protect by copyright.
    
    Id. As a
    final matter, the district court distinguished two
    cases, Hart v. Dan Chase Taxidermy Supply Co., 
    86 F.3d 320
    (2d Cir. 1996), and Superior Form Builders, Inc. v. Dan Chase
    Taxidermy Supply Co., Inc., 
    74 F.3d 488
    (4th Cir. 1996), which
    upheld the copyrightability of animal and fish mannequins.
    The district court found the Hart case unpersuasive, but
    concluded that “one cannot say of Mara what the fourth
    circuit said of animal mannequins: Mara is valued not for
    ‘its own appearance’ but for what it enables students to do
    and learn. Mara is a ‘useful article’ as § 101 and Superior
    Form Builders deploy that term.” 
    Id. at 6.
    2.     Fee Petition
    Although fees are available under the 1976 Act, the
    district court’s order made no provision for fees. Charlene,
    8                                        Nos. 01-3888 & 02-1152
    therefore, sought an award of attorneys’ fees of approxi-
    mately $421,915 pursuant to 17 U.S.C. § 505. Charlene
    submitted its fees to Pivot Point and sought to confer and
    exchange information as required by Northern District of
    Illinois Local Rule 54.3(d). Pivot Point would not participate
    in this exercise on the basis that any fee request would be
    untimely because Charlene had missed the fourteen-day
    deadline for filing a fee motion set forth in Federal Rule of
    Civil Procedure 54(d)(2)(B).
    Charlene then moved for an instruction from the district
    court ordering Pivot Point to participate in the fee request
    process but the district court refused. It explained that its
    “opinion and declaratory judgment resolving this case on
    the merits did not make any provision for attorneys’ fees.”
    R.413 at 1. Because the judgment did not contain an order
    with respect to an attorneys’ fee petition, the district court
    did not believe Local Rule 54.3 was applicable. Instead, the
    parties were bound by the fourteen-day deadline set forth
    in Federal Rule 54 (d)(2)(B). Furthermore, the district court
    believed that its reading of Local Rule 54.3—as not extend-
    ing the time period allowed in Federal Rule 54—saved the
    local rule because otherwise it would be inconsistent with
    Federal Rule 54 and therefore invalid pursuant to Federal
    4
    Rule 83.
    4
    Federal Rule of Civil Procedure 83 provides:
    (1) Each district court, acting by a majority of its district
    judges, may, after giving appropriate public notice and an
    opportunity for comment, make and amend rules governing
    its practice. A local rule shall be consistent with—but not
    duplicative of—Acts of Congress and rules adopted under 28
    U.S.C. §§ 2072 and 2075, and shall conform to any uniform
    numbering system prescribed by the Judicial Conference of
    (continued...)
    Nos. 01-3888 & 02-1152                                            9
    Finally, the district court acknowledged that it had the
    discretion to extend the time to file such a motion; however,
    it stated that it was “not even slightly disposed to grant any
    [extension], because the parties knew well before October 2
    what the judgment was likely to provide.” 
    Id. at 1.
      Pivot Point now appeals from the district court’s sum-
    mary judgment in favor of Charlene; Charlene appeals from
    the district court’s judgment with respect to its attorneys’
    fee petition.
    II
    ANALYSIS
    A. Standard of Review
    This court reviews de novo a district court’s grant of
    summary judgment. See Silk v. City of Chicago, 
    194 F.3d 788
    ,
    798 (7th Cir. 1999). In evaluating the judgment, we “con-
    strue all facts in the light most favorable to the non-moving
    party and draw all reasonable and justifiable inferences in
    favor of that party.” Bellaver v. Quanex Corp., 
    200 F.3d 485
    ,
    491-92 (7th Cir. 2000). If the record shows “that there is no
    genuine issue as to any material fact and that the moving
    party is entitled to judgment as a matter of law,” summary
    4
    (...continued)
    the United States. A local rule takes effect on the date
    specified by the district court and remains in effect unless
    amended by the court or abrogated by the judicial council of
    the circuit. Copies of rules and amendments shall, upon their
    promulgation, be furnished to the judicial council and the
    Administrative Office of the United States Courts and be
    made available to the public.
    Fed. R. Civ. P. 83(a)(1) (emphasis added).
    10                                       Nos. 01-3888 & 02-1152
    judgment is appropriate. Fed. R. Civ. P. 56(c); see Celotex
    Corp. v. Catrett, 
    477 U.S. 317
    , 322 (1986).
    B. Copyrightability
    The central issue in this case is whether the Mara manne-
    quin is subject to copyright protection. This issue presents,
    at bottom, a question of statutory interpretation. We there-
    fore begin our analysis with the language of the statute.
    Two provisions contained in 17 U.S.C. § 101 are at the center
    of our inquiry. The first of these is the description of
    pictorial, graphic and sculptural works:
    “Pictorial, graphic, and sculptural works” include
    two-dimensional and three-dimensional works of fine,
    graphic, and applied art, photographs, prints and art
    reproductions, maps, globes, charts, diagrams, models,
    and technical drawings, including architectural plans.
    Such works shall include works of artistic craftsmanship
    insofar as their form but not their mechanical or utilitar-
    ian aspects are concerned; 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.
    The definition section further provides that “[a] ‘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. An article that is normally a part of
    a useful article is considered a ‘useful article.’ ” 17 U.S.C.
    § 101. As is clear from the definition of pictorial, graphic
    and sculptural work, only “useful article[s],” as the term is
    further defined, are subject to the limitation contained in the
    Nos. 01-3888 & 02-1152                                         11
    emphasized language above. If an article is not “useful” as
    the term is defined in § 101, then it is a pictorial, graphic
    and sculptural work entitled to copyright protection
    (assuming the other requirements of the statute are met).
    1.     Usefulness
    Pivot Point submits that the Mara mannequin is not a
    “useful article” for purposes of § 101 because its “inherent
    nature is to portray the appearance of runway models. Its
    value,” continues Pivot Point, “resides in how well it por-
    trays the appearance of runway models, just as the value of
    a bust—depicting Cleopatra, for example, . . .—would be in
    how well it approximates what one imagines the subject
    looked like.” Appellant’s Br. at 19. Pivot Point relies upon
    the decisions of the Fourth Circuit in Superior Form Builders
    and of the Second Circuit in Hart for the proposition that
    mannequins, albeit in those cases animal and fish manne-
    quins, are not useful articles. Specifically, the Fourth Circuit
    explained that
    [a] mannequin provides the creative form and expres-
    sion of the ultimate animal display. . . . Even though
    covered with a skin, the mannequin is not invisible but
    conspicuous in the final display. The angle of the ani-
    mal’s head, the juxtaposition of its body parts, and the
    shape of the body parts in the final display is little more
    than the portrayal of the underlying mannequin.
    Indeed, the mannequin can even portray the intensity of
    flexed body parts, or it can reveal the grace of relaxed
    ones. None of these expressive aspects of a mannequin
    is lost by covering the mannequin with a skin. Thus, any
    utilitarian aspect of the mannequin exists “merely to
    portray the appearance” of the animal.
    Superior Form 
    Builders, 74 F.3d at 494
    ; see also 
    Hart, 86 F.3d at 323
    (“The function of the fish form is to portray its own
    12                                      Nos. 01-3888 & 02-1152
    appearance, and that fact is enough to bring it within the
    scope of the Copyright Act.”). Consequently, in Pivot
    Point’s view, because the Mara mannequin performs func-
    tions similar to those of animal and fish mannequins, it is
    not a useful article and is therefore entitled to full copyright
    protection.
    Charlene presents us with a different view. It suggests
    that, unlike the animal mannequins at issue in Superior Form
    Builders and in Hart, the Mara mannequin does have a
    useful function other than portraying an image of a high-
    fashion runway model. According to Charlene, Mara also is
    marketed and used for practicing the art of makeup ap-
    plication. Charlene points to various places in the record
    that establish that Mara is used for this purpose and is,
    therefore, a useful article subject to the limiting language of
    § 101.
    Pivot Point strongly disputes that the record establishes
    such a use and argues that the district court’s reliance on
    Charlene’s alleged proof improperly resolves an issue of fact
    against the non-moving party in contravention of Federal
    5
    Rule of Civil Procedure 56. Indeed, our own review of the
    5
    The district court relied heavily on this fact in concluding that
    Mara is a useful object:
    Mara is a work of “applied art” and displays “artistic
    craftsmanship”—Pivot Point commissioned a sculptor to
    design a mannequin head that emulates features of runway
    models—but serves utilitarian ends: Students in beauty
    schools practice styling hair on Mara’s head and may
    practice other skills by applying makeup to Mara’s eyes, lips,
    and cheeks. The parties dispute which functions are primary.
    Charlene Products says that Mara is used primarily for
    practicing makeup; Pivot Point insists that its primary use is
    (continued...)
    Nos. 01-3888 & 02-1152                                              13
    record leads us to believe that many of the documents cited
    by Charlene are susceptible to more than one interpretation.
    Nevertheless, we shall assume that the district court
    correctly ruled that Mara is a useful article and proceed to
    examine whether, despite that usefulness, it is amenable to
    copyright protection.
    2.   Separability
    We return to the statutory language. A useful article falls
    within the definition of pictorial, graphic or sculptural
    works “only if, and only to the extent that, such design incorpo-
    rates pictorial, graphic, or sculptural features that can be identi-
    fied separately from, and are capable of existing independently of,
    5
    (...continued)
    hair styling. This factual dispute might have legal signifi-
    cance if Pivot Point were contending that Mara’s sole use is
    hair styling; then it is (barely) possible to imagine a suitable
    mannequin head devoid of human features. (The legal
    significance of this possibility is explicated below.) But Pivot
    Point contends only that Mara’s “primary” use is hair
    styling; it does not deny that a use (if only, in its view, a
    secondary one) is the application of makeup and other
    beauty-school arts, and the evidence would not permit a
    reasonable jury to conclude that Mara has no utilitarian
    value for makeup practice. (Pivot Point says that it “gener-
    ally” sells Mara with painted-on makeup, which reveals by
    negative implication that it also sells Mara without eye or
    cheek coloring, so that beauty-school students can add their
    own.)
    R.401 at 2.
    14                                       Nos. 01-3888 & 02-1152
    6
    the utilitarian aspects of the article.” 17 U.S.C. § 101. It is
    common ground between the parties and, indeed, among
    the courts that have examined the issue, that this language,
    added by the 1976 Act, was intended to distinguish creative
    works that enjoy protection from elements of industrial
    design that do not. See H.R. Rep. No. 94-1476, at 55 (1976),
    6
    Prior to the addition of this language in the 1976 Act, Congress
    had not explicitly authorized the Copyright Office to register
    “useful articles.” Indeed, when Congress first extended copyright
    protection to three-dimensional works of art in 1870, copyright
    protection was limited to objects of fine art; objects of applied art
    still were not protected. See Paul Goldstein, 1 Copyright § 2.5.3 at
    2:58 (2d ed. 2004). This changed with the adoption of the Copy-
    right Act of 1909 (“1909 Act”); Professor Goldstein explains:
    The 1909 Act, which continued protection for three-dimen-
    sional works of art, dropped the requirement that they
    constitute fine art and thus opened the door to protection of
    useful works of art. In 1948, the Copyright Office broadened
    the scope of protection for three-dimensional works of art to
    cover “works of artistic craftsmanship insofar as their form
    but not their utilitarian aspects are concerned.” The United
    States Supreme Court upheld this interpretation in Mazer v.
    Stein, [
    347 U.S. 201
    , 213 (1954),] holding that the fact that
    statuettes in issue were intended for use in articles of
    manufacture—electric lamp bases—did not bar them from
    copyright. Five years later, in 1959, the Copyright Office
    promulgated a rule that if “the sole intrinsic function of an
    article is its utility, the fact that the work is unique and
    attractively shaped will not qualify it as a work of art.” The
    regulation did, however, permit registration of features of a
    utilitarian article that “can be identified separately and are
    capable of existing independently as a work of art.”
    
    Id. (quoting 37
    C.F.R. § 207.8(a) (1949) and 37 C.F.R. § 202.10(c)
    (1959); footnotes omitted).
    Nos. 01-3888 & 02-1152                                     15
    reprinted in 1976 U.S.C.C.A.N. 5659, 5668 (stating that the
    purpose behind this language was “to draw as clear a line
    as possible between copyrightable works of applied art and
    uncopyrighted works of industrial design”). Although the
    Congressional goal was evident, application of this lan-
    guage has presented the courts with significant difficulty.
    Indeed, one scholar has noted: “Of the many fine lines that
    run through the Copyright Act, none is more troublesome
    than the line between protectible pictorial, graphic and
    sculptural works and unprotectible utilitarian elements of
    industrial design.” Paul Goldstein, 1 Copyright § 2.5.3, at
    2:56 (2d ed. 2004).
    The difficulty in the application of this language would
    not have come, in all likelihood, as a surprise to the Con-
    gressional drafters. The language employed by Congress is
    not the language of a bright-line rule of universal applica-
    tion. Indeed, the circuits that have addressed the interpreta-
    tive problem now before us uniformly have recognized that
    the wording of the statute does not supply categorical
    direction, but rather requires the Copyright Office and the
    courts “to continue their efforts to distinguish applied art
    and industrial design.” Robert C. Denicola, Applied Art &
    Industrial Design: A Suggested Approach to Copyright in Useful
    Articles, 
    67 Minn. L
    . Rev. 707, 730 (1983). In short, no doubt
    well-aware of the myriad of factual scenarios to which its
    policy guidance would have to be applied, Congress wisely
    chose to provide only general policy guidance to be imple-
    mented on a case-by-case basis through the Copyright
    Office and the courts.
    Even though the words of the statute do not yield a
    definitive answer, we believe that the statutory language
    nevertheless provides significant guidance in our task. We
    therefore shall examine in more detail what that language
    has to tell us, and we return to the necessary starting point
    of our task, § 101.
    16                                     Nos. 01-3888 & 02-1152
    The statutory language provides that “the design of a
    useful article . . . 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.” Al-
    though the italicized clause contains two operative
    phrases—“can be identified separately from” and “are capable of
    existing independently of”—we believe, as have the other
    7
    courts that have grappled with this issue, that Congress, in
    amending the statute, intended these two phrases to state a
    single, integrated standard to determine when there is
    sufficient separateness between the utilitarian and artistic
    aspects of a work to justify copyright protection.
    Certainly, one approach to determine whether material
    can be “identified separately,” and the most obvious, is to
    rely on the capacity of the artistic material to be severed
    physically from the industrial design. See Mazer v. Stein, 
    347 U.S. 201
    (1954) (holding that a statuette incorporated into
    the base of a lamp is copyrightable). When a three-dimen-
    sional article is the focus of the inquiry, reliance on physical
    separability can no doubt be a helpful tool in ascertaining
    whether the artistic material in question can be separated
    from the industrial design. As Professor Denicola points
    out, however, such an approach really is not of much use
    when the item in question is two-dimensional. See 
    Denicola, supra, at 744
    . Indeed, because this provision, by its very
    words, was intended to apply to two-dimensional material,
    it is clear that a physical separability test cannot be the
    exclusive test for determining copyrightability.
    7
    See infra note 8.
    Nos. 01-3888 & 02-1152                                               17
    It seems to be common ground between the parties and,
    indeed, among the courts and commentators, that the pro-
    tection of the copyright statute also can be secured when a
    conceptual separability exists between the material sought
    to be copyrighted and the utilitarian design in which that
    8
    material is incorporated. The difficulty lies not in the
    8
    Although the district court was skeptical that the statutory
    language encompassed both physical and conceptual separabil-
    ity, circuits have been almost unanimous in interpreting the
    language of § 101 to include both types of separability. See
    Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., Inc.,
    
    74 F.3d 488
    , 494 (4th Cir. 1996) (asking whether functional aspects
    of animal mannequins are “conceptually separable from the
    works’ sculptural features”); Brandir Int’l, Inc. v. Cascade Pac.
    Lumber Co., 
    834 F.2d 1142
    , 1144 (2d Cir. 1987) (stating that
    “ ‘[c]onceptual separability’ is alive and well”); Carol Barnhart Inc.
    v. Econ. Cover Corp., 
    773 F.2d 411
    , 418 (2d Cir. 1985) (judging
    copyrightability of mannequin torsos based on whether “forms
    possess aesthetic or artistic features that are physically or
    conceptually separable from the forms’ use as utilitarian objects
    to display clothes”); Norris Indus., Inc. v. Int’l Tel. & Tel. Corp., 
    696 F.2d 918
    , 923 (11th Cir. 1983) (“Both case law and legislative
    history indicate that separability encompasses works of art that
    are either physically severable from the utilitarian article or
    conceptually severable.”); Kieselstein-Cord v. Accessories by Pearl,
    Inc., 
    632 F.2d 989
    , 993 (2d Cir. 1980) (applying test of conceptual
    separability).
    Only one appellate court has rejected the idea of conceptual
    separability. See Esquire, Inc. v. Ringer, 
    591 F.2d 796
    (D.C. Cir.
    1978). In that case, arising under the 1909 Act, the Copyright
    Office had refused to register a design for outdoor lighting
    fixtures. The district court, however, believed the fixtures were
    copyrightable and issued a writ of mandamus that the copyright
    issue. However, the D.C. Circuit reversed. The precise question
    (continued...)
    18                                          Nos. 01-3888 & 02-1152
    8
    (...continued)
    before the court was whether the regulation implementing the
    1909 Act mandated that the Copyright Office register a copyright
    for the lighting fixtures. The regulation at issue provided:
    “(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 utilitar-
    ian 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.”
    
    Id. at 800
    (quoting 37 C.F.R. § 202.10(b) (1976)). The Copyright
    Office took the position that the regulation barred “copyright
    registration for the overall shape or configuration of a utilitarian
    article, no matter how aesthetically pleasing that shape or
    configuration may be.” 
    Id. In determining
    whether to accept or
    reject the proffered interpretation, the court noted that
    “[c]onsiderable weight is to be given to an agency’s interpretation
    of its regulations,” especially when “an administrative interpreta-
    tion relates to a matter within the field of administrative exper-
    tise.” 
    Id. at 801.
    The court concluded that the Copyright Office
    had adopted a “reasonable and well-supported interpretation of
    § 202.10(c).” 
    Id. at 800
    . In the court’s view, the interpretation was
    grounded in “the principle that industrial designs are not eligible
    for copyright.” 
    Id. The court
    also believed that the interpretation
    found support in the legislative history of the newly enacted 1976
    Act. The court acknowledged, however, that the legislative
    history was not “free from ambiguity”; it explained:
    Esquire could arguably draw some support from the state-
    ment that a protectable element of a utilitarian article must
    be separable “physically or conceptually” from the utilitarian
    aspects of the design. But any possible ambiguity raised by
    this isolated reference disappears when the excerpt is
    considered in its entirety. The underscored passages indicate
    (continued...)
    Nos. 01-3888 & 02-1152                                               19
    acceptance of that proposition, which the statutory language
    clearly contemplates, but in its application. As noted by
    Pivot Point, the following tests have been suggested for
    determining when the artistic and utilitarian aspects of
    useful articles are conceptually separable: 1) the artistic
    features are “primary” and the utilitarian features “subsid-
    iary,” 
    Kieselstein-Cord, 632 F.2d at 993
    ; 2) the useful article
    “would still be marketable to some significant segment of
    the community simply because of its aesthetic qualities,”
    Melville B. Nimmer & David Nimmer, 1 Nimmer on
    Copyright § 2.08 [B][3], at 2-101 (2004); 3) the article
    “stimulate[s] in the mind of the beholder a concept that is
    separate from the concept evoked by its utilitarian func-
    tion,” Carol 
    Barnhart, 773 F.2d at 422
    (Newman, J., dissent-
    ing); 4) the artistic design was not significantly influenced
    by functional considerations, see Brandir 
    Int’l, 834 F.2d at 8
        (...continued)
    unequivocally that the overall design or configuration of a
    utilitarian object, even if it is determined by aesthetic as well
    as functional considerations, is not eligible for copyright.
    Thus the legislative history, taken as congressional under-
    standing of existing law, reinforces the Register’s position.
    
    Id. at 803-04.
      As is evident from the passages set forth above, the issue
    addressed by the D.C. Circuit in Esquire arose in a much different
    procedural and legal environment than the issue in the present
    case. The court’s focus in Esquire was a regulation adopted
    pursuant to the former law and its obligation to defer to the
    agency’s interpretation of the law embodied in that regulation.
    Furthermore, the court acknowledged that the 1976 Act was “not
    applicable to the case before” it. 
    Id. at 803.
    Given these differ-
    ences, we do not believe that the D.C. Circuit would conclude
    that its decision in Esquire disposed of the issue of conceptual
    separability presently before this court.
    20                                    Nos. 01-3888 & 02-1152
    1145 (adopting the test forwarded in 
    Denicola, supra, at 741
    );
    5) the artistic features “can stand alone as a work of art
    traditionally conceived, and . . . the useful article in which
    it is embodied would be equally useful without it,”
    Goldstein, 1 Copyright § 2.5.3, at 2:67; and 6) the artistic
    features are not utilitarian, see William F. Patry, 1 Copyright
    Law & Practice 285 (1994).
    Pivot Point submits that “the test for conceptual separabil-
    ity should reflect the focus of copyright law—the artistic,
    not the marketability, design process, or usefulness.”
    Appellant’s Br. at 26. According to Pivot Point, the central
    inquiry is whether the article is a “ ‘work of art.’ ” 
    Id. Pivot Point
    further explains:
    Conceptual separability would inhere in a “work of art”
    integrated into a useful article, or a “work of art” put to
    unexpected use, since the independent concepts of art
    and utility coexist. Conceptual separability would not
    exist in a useful article rendered simply aesthetically
    pleasing, since the independent concept of art does not
    exist, only the “artistic” embellishment to its utility, so
    that such “artistic” features are actually utilitarian.
    Should the “artistic” embellishment of utility reach the
    level of a “work of art,” however, conceptual separabil-
    ity may exist.
    
    Id. at 26-27.
    This test, Pivot Point suggests, has the addi-
    tional benefit of “satisf[ying] most, if not all, of the current
    definitions of conceptual separability.” 
    Id. at 27.
      Charlene, by contrast, lauds the district court’s adoption
    of Professor Goldstein’s test. “Under Goldstein’s test,”
    Charlene asserts, “ ‘a pictorial, graphic or sculptural feature
    incorporated in the design of a useful article is conceptually
    separable if it can stand on its own as a work of art tradi-
    tionally conceived, and if the useful article in which it is
    Nos. 01-3888 & 02-1152                                        21
    embodied would be equally useful without it.’ ” Appellees’
    Br. at 26 (quoting R.401 at 5; emphasis added). Charlene
    contends that this approach mirrors that adopted by the
    majority in Carol Barnhart Inc. v. Economy Cover Corp., 
    773 F.2d 411
    (2d Cir. 1985), “the most closely related precedent
    to the case at bar.” Appellees’ Br. at 26.
    Although both sides present thoughtful explanations for
    their proposed tests, we perceive shortcomings in the par-
    ties’ choices. With respect to Pivot Point’s focus on the arti-
    cle as a “work of art,” it is certainly correct that Congress, in
    enacting § 101, attempted to separate the artistic from the
    utilitarian. However, this approach necessarily involves
    judges in a qualitative evaluation of artistic endeavors—a
    function for which judicial office is hardly a qualifier. With
    respect to the Charlene’s approach, we believe that the test,
    at least when applied alone, is tied too closely to physical
    separability and, consequently, does not give a sufficiently
    wide berth to Congress’ determination that artistic material
    conceptually separate from the utilitarian design can satisfy
    the statutory mandate.
    In articulating a meaningful approach to conceptual se-
    parability, we note that we are not the first court of appeals
    to deal with this problem. The work of our colleagues in the
    other circuits provides significant insights into our under-
    standing of Congressional intent. Indeed, even when those
    judges have disagreed on the appropriate application of the
    Congressional mandate to the case before them, their insight
    yield a bountiful harvest for those of us who now walk the
    same interpretative path.
    Among the circuits, the Court of Appeals for the Second
    Circuit has had occasion to wrestle most comprehensively
    with the notion of “conceptual separability.” Its case law
    represents, we believe, an intellectual journey that has ex-
    22                                   Nos. 01-3888 & 02-1152
    plored the key aspects of the problem. We therefore turn to
    a study of the key stages of doctrinal development in its
    case law.
    a.
    The Second Circuit first grappled with the issue of
    conceptual separability in Kieselstein-Cord v. Accessories by
    Pearl, Inc., 
    632 F.2d 989
    (2d Cir. 1980). In that case,
    Kieselstein-Cord, a jewelry designer, had created a line of
    decorative and jeweled belt buckles inspired by works of
    art; he obtained copyright registrations for his designs.
    When the line was successful, Accessories by Pearl, Inc.,
    (“Pearl”) copied the designs and marketed its own, less-
    expensive versions of the belt buckles. Kieselstein-Cord then
    sued Pearl for copyright infringement; however,
    Pearl claimed that the belt buckles were not copyrightable
    because they were “ ‘useful articles’ with no ‘pictorial,
    graphic, or sculptural features that can be identified sepa-
    rately from, and are capable of existing independently of,
    the utilitarian aspects’ of the buckles.” 
    Id. at 991-92.
    The
    Second Circuit disagreed. Although it did not articulate a
    specific test for evaluating conceptual separability, it fo-
    cused on the “primary” and “subsidiary” elements of the
    article and concluded:
    We see in appellant’s belt buckles conceptually separa-
    ble sculptural elements, as apparently have the buckles’
    wearers who have used them as ornamentation for parts
    of the body other than the waist. The primary ornamen-
    tal aspect of the Vaquero and Winchester buckles is
    conceptually separable from their subsidiary utilitarian
    function. This conclusion is not at variance with the
    expressed congressional intent to distinguish
    copyrightable applied art and uncopyrightable indus-
    Nos. 01-3888 & 02-1152                                      23
    trial design. Pieces of applied art, these buckles may be
    considered jewelry, the form of which is subject to
    copyright protection.
    9
    
    Id. at 993
    (internal citations omitted).
    b.
    The Second Circuit revisited the issue of conceptual
    separability in Carol Barnhart Inc. v. Economy Cover Corp., 
    773 F.2d 411
    (2d Cir. 1985). In that case, Carol Barnhart, a
    provider of retail display items, developed four mannequins
    consisting of human torsos for the display of shirts and
    jackets. It obtained copyright registrations for each of the
    10
    forms. When a competitor, Economy Cover, copied the
    designs, Carol Barnhart claimed infringement of that
    copyright. The Second Circuit held that the designs were not
    copyrightable. It explained:
    [W]hile copyright protection has increasingly been ex-
    tended to cover articles having a utilitarian dimension,
    Congress has explicitly refused copyright protection for
    works of applied art or industrial design which have
    aesthetic or artistic features that cannot be identified
    separately from the useful article. Such works are not
    copyrightable regardless of the fact that they may be
    “aesthetically satisfying and valuable.”
    9
    Judge Weinstein (sitting by designation) dissented. See
    
    Kieselstein-Cord, 632 F.2d at 993
    .
    10
    There were a total of four mannequins at issue, two male and
    two female. Of those four, two of the mannequin forms were
    unclothed, and two were formed with one layer of clothing and
    were meant specifically for the display of outerwear.
    24                                    Nos. 01-3888 & 02-1152
    Applying these principles, we are persuaded that
    since the aesthetic and artistic features of the Barnhart
    forms are inseparable from the forms’ use as utilitarian
    articles the forms are not copyrightable. . . . [Barnhart]
    stresses that the forms have been responded to as
    sculptural forms, and have been used for purposes
    other than modeling clothes, e.g., as decorating props
    and signs without any clothing or accessories. While
    this may indicate that the forms are “aesthetically sa-
    tisfying and valuable,” it is insufficient to show that the
    forms possess aesthetic or artistic features that are
    physically or conceptually separable from the forms’
    use as utilitarian objects to display clothes. On the
    contrary, to the extent the forms possess aesthetically
    pleasing features, even when these features are consid-
    ered in the aggregate, they cannot be conceptualized as
    existing independently of their utilitarian function.
    
    Id. at 418
    (internal citations omitted). The court also rejected
    the argument that Kieselstein-Cord was controlling. The
    majority explained that what distinguished the Kieselstein-
    Cord buckles from the Barnhart forms was “that the orna-
    mented surfaces of the buckles were not in any respect
    required by their functions; the artistic and aesthetic
    features would thus be conceived as having been added to,
    or superimposed upon, an otherwise utilitarian article.” 
    Id. at 419.
      Perhaps the most theoretical and comprehensive discus-
    sion of “conceptual separability,” as opposed to physical
    separability, can be found in the dissenting opinion of Judge
    Newman in Carol 
    Barnhart, 773 F.2d at 419
    . After reviewing
    the possible ways to determine conceptual separability,
    Judge Newman set forth his choice and rationale:
    Nos. 01-3888 & 02-1152                                     25
    How, then, is “conceptual separateness” to be deter-
    mined? In my view, the answer derives from the word
    “conceptual.” For the design features to be “concep-
    tually separate” from the utilitarian aspects of the useful
    article that embodies the design, the article must stimu-
    late in the mind of the beholder a concept that is sepa-
    rate from the concept evoked by its utilitarian function.
    The test turns on what may reasonably be understood
    to be occurring in the mind of the beholder or, as some
    might say, in the “mind’s eye” of the beholder. . . .
    ...
    The “separateness” of the utilitarian and non-utilitar-
    ian concepts engendered by an article’s design is itself
    a perplexing concept. I think the requisite “separate-
    ness” exists whenever the design creates in the mind of
    the ordinary observer two different concepts that are
    not inevitably entertained simultaneously. Again, the
    example of the artistically designed chair displayed in
    a museum may be helpful. The ordinary observer can be
    expected to apprehend the design of a chair whenever
    the object is viewed. He may, in addition, entertain the
    concept of a work of art, but, if this second concept is
    engendered in the observer’s mind simultaneously with
    the concept of the article’s utilitarian function, the
    requisite “separateness” does not exist. The test is not
    whether the observer fails to recognize the object as a
    chair but only whether the concept of the utilitarian
    function can be displaced in the mind by some other
    concept. That does not occur, at least for the ordinary
    observer, when viewing even the most artistically
    designed chair. It may occur, however, when viewing
    some other object if the utilitarian function of the object
    is not perceived at all; it may also occur, even when the
    utilitarian function is perceived by observation, perhaps
    26                                    Nos. 01-3888 & 02-1152
    aided by explanation, if the concept of the utilitarian
    function can be displaced in the observer’s mind while
    he entertains the separate concept of some non-utilitar-
    ian function. The separate concept will normally be that
    of a work of art.
    
    Id. at 422-23.
    c.
    The Second Circuit soon addressed conceptual separ-
    ability again in Brandir International, Inc. v. Cascade Pacific
    Lumber Co., 
    834 F.2d 1142
    (2d Cir. 1987). That case involved
    the work of an artist, David Levine; specifically, Levine had
    created a sculpture of thick, interwoven wire. A cyclist
    friend of Levine’s realized that the sculpture could, with
    modification, function as a bicycle rack and thereafter put
    Levine in touch with Brandir International, Inc. (“Brandir”).
    The artist and the Brandir engineers then worked to modify
    the sculpture to produce a workable and marketable bicycle
    rack. Their work culminated in the “Ribbon Rack,” which
    Brandir began marketing in 1979. Shortly thereafter, Cas-
    cade Pacific Lumber Co. (“Cascade”) began selling a similar
    product, and, in response, Brandir applied for copyright
    protection and began placing copyright notices on its racks.
    The Copyright Office, however, rejected the registration on
    the ground that the rack did not contain any element that
    was “capable of independent existence as a copyrightable
    pictorial, graphic or sculptural work apart from the shape of
    the useful article.” 
    Id. at 1146.
      The court first considered the possible tests for conceptual
    separability in light of its past decisions and, notably,
    attempted to reconcile its earlier attempts:
    Nos. 01-3888 & 02-1152                                       27
    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, [
    67 Minn. L
    . Rev. 707 (1983)]. . . .
    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
    copyrightability as “an attempt to identify elements
    whose form and appearance reflect the unconstrained
    perspective of the artist,” such features not being the
    product of industrial design. 
    Id. at 742.
    “Copyright-
    ability, therefore, should turn on the relationship be-
    tween the proffered work and the process of industrial
    design.” 
    Id. at 741.
    He suggests that “the dominant
    characteristic of industrial design is the influence of
    nonaesthetic, utilitarian concerns” and hence concludes
    that copyrightability “ultimately should depend on the
    extent to which the work reflects artistic expression
    uninhibited by functional considerations.” 
    Id. To state
       the Denicola test in the language of conceptual separa-
    bility, if design elements reflect a merger of aesthetic
    and functional considerations, the artistic aspects of a
    work cannot be said to be conceptually separable from
    the utilitarian elements. Conversely, where design ele-
    ments can be identified as reflecting the designer’s
    artistic judgment exercised independently of functional
    influences, conceptual separability exists.
    We believe that Professor Denicola’s approach pro-
    vides the best test for conceptual separability and,
    accordingly, adopt it here for several reasons. First, the
    approach is consistent with the holdings of our previous
    cases. In Kieselstein-Cord, for example, the artistic aspects
    28                                     Nos. 01-3888 & 02-1152
    of the belt buckles reflected purely aesthetic choices,
    independent of the buckles’ function, while in Carol
    Barnhart the distinctive features of the torsos—the
    accurate anatomical design and the sculpted shirts and
    collars—showed clearly the influence of functional con-
    cerns. . . . Second, the test’s emphasis on the influence of
    utilitarian concerns in the design process may help . . .
    “alleviate the de facto discrimination against
    nonrepresentational art that has regrettably accompa-
    nied much of the current analysis.” 
    Id. at 745.
    Id. at 1145 
    (footnotes omitted).
    Applying Professor Denicola’s test to the Ribbon Rack, the
    court found that the rack was not copyrightable. The court
    stated that, “[h]ad Brandir merely adopted one of the
    existing sculptures as a bicycle rack, neither the application
    to a utilitarian end nor commercialization of that use would
    have caused the object to forfeit its copyrighted status.” 
    Id. at 1147.
    However, when the Ribbon Rack was compared to
    earlier sculptures, continued the court, it was “in its final
    form essentially a product of industrial design.” 
    Id. In creating
    the RIBBON Rack, the designer . . . clearly
    adapted the original aesthetic elements to accommodate
    and further a utilitarian purpose. These altered design
    features of the RIBBON Rack, including the
    spacesaving, open design achieved by widening the
    upper loops . . ., the straightened vertical elements that
    allow in- and above-ground installation of the rack, the
    ability to fit all types of bicycles and mopeds, and the
    heavy-gauged tubular construction of rustproof gal-
    vanized steel, are all features that combine to make for
    a safe, secure, and maintenance-free system of parking
    bicycles and mopeds.
    ...
    Nos. 01-3888 & 02-1152                                     29
    . . . While the RIBBON Rack may be worthy of admi-
    ration for its aesthetic qualities alone, it remains none-
    theless the product of industrial design. Form and
    function are inextricably intertwined in the rack, its
    ultimate design being as much the result of utilitarian
    pressures as aesthetic choices . . . . Thus there remains
    no artistic element of the RIBBON Rack that can be
    identified as separate and “capable of existing inde-
    pendently, of, the utilitarian aspects of the article.”
    
    Id. at 1146-47.
    d.
    We believe that the experience of the Second Circuit is
    also reflected in the more recent encounter of the Fourth
    Circuit with the same problem. In Superior Form Builders,
    Inc. v. Dan Chase Taxidermy Supply Co., Inc., 
    74 F.3d 488
    (4th
    Cir. 1996), the court considered whether animal mannequins
    qualified for copyright protection. The Fourth Circuit first
    considered whether the mannequins were useful articles as
    defined by § 101 and concluded that they were not:
    A mannequin provides the creative form and expres-
    sion of the ultimate animal display. . . . Even though
    covered with a skin, the mannequin is not invisible
    but conspicuous in the final display. The angle of the
    animal’s head, the juxtaposition of its body parts, and
    the shape of the body parts in the final display is little
    more than the portrayal of the underlying manne-
    quin. . . . None of these expressive aspects of a manne-
    quin is lost by covering the mannequin with a skin.
    Thus, any utilitarian aspect of the mannequin exists
    “merely to portray the appearance” of the animal. See 17
    U.S.C. § 101.
    30                                     Nos. 01-3888 & 02-1152
    . . . It is the portrayal of the animal’s body expression
    given by the mannequin that is thus protectable under
    the Copyright Act. We therefore agree with the district
    court in this case because “the usefulness of the forms is
    their portrayal of the appearance of animals.” The
    mannequin forms “by definition are not useful articles.”
    
    Id. at 494
    (quoting Superior Form Builders v. Dan Chase
    Taxidermy Supply Co., Inc., 
    851 F. Supp. 222
    , 223 (E.D. Va.
    1994)).
    The court, however, also considered whether, if useful, the
    utilitarian and aesthetic aspects of the mannequin were
    separable:
    To the extent that an argument can be made that the
    mannequins in this case perform a utilitarian func-
    tion—other than portraying themselves—by supporting
    the mounted skins, we believe the function to be con-
    ceptually separable from the works’ sculptural features.
    See Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 
    834 F.2d 1142
    , 1145 (2d Cir. 1987) (“Where design elements can
    be identified as reflecting the designer’s artistic judg-
    ment exercised independently of functional influences,
    conceptual separability exists.”); Kieselstein-Cord v.
    Accessories by Pearl, Inc., 
    632 F.2d 989
    , 993 (2d Cir. 1980)
    (finding sculptural element of belt buckle conceptually
    separable from utilitarian function).
    
    Id. Thus, without
    specifically adopting one of the tests of
    conceptual separability, the Fourth Circuit determined that
    artistic work put into the design of the animal frame was
    copyrightable; the fact that a skin was placed on the model
    Nos. 01-3888 & 02-1152                                            31
    and that the model, therefore, was useful in the display of
    11
    the skin did not negate the artistic elements of the design.
    11
    Notably, in Hart v. Dan Chase Taxidermy Supply Co., 
    86 F.3d 320
    (2d Cir. 1996), the Second Circuit shortly thereafter addressed the
    question whether a fish mannequin was copyrightable. Although
    the court did not address specifically the issue before us today, its
    analysis is nevertheless helpful. Referring to its decision in Carol
    Barnhart, the Second Circuit posed the question rather simplisti-
    cally: “Is taxidermy different [for purposes of copyright protec-
    tion]?” 
    Id. at 321.
    The Second Circuit resolved that it is:
    We do not agree that Barnhart mandates a finding that fish
    mannequins are “useful articles” undeserving of copyright
    protection. . . . [W]e do not believe that the Barnhart torsos
    can be analogized to the fish in this case. In Barnhart, the
    headless, armless, backless styrene torsos were little more
    than glorified coat-racks used to display clothing in stores.
    The torsos were designed to present the clothing, not their
    own forms. In taxidermy, by contrast, people look for more
    than a fish skin; they wish to see a complete “fish.” The
    superficial characteristics of the fish, such as its color and
    texture, are admittedly conveyed by the skin, but the shape,
    volume, and movement of the animal are depicted by the
    underlying mannequin. Whether the fish is shown as resting,
    jumping, wiggling its tail, or preparing to munch on some
    plankton, is dictated by the mannequin and by its particular
    form, not by the skin.
    In short, the fish mannequin is designed to be looked at.
    That the fish mannequin is meant to be viewed clothed by a
    fish skin, rather than naked and on its own, makes no
    difference. The function of the fish form is to portray its own
    appearance, and that fact is enough to bring it within the
    scope of the Copyright Act. 17 U.S.C. § 101; accord Superior
    Form Builders v. Dan Chase Taxidermy Supply Co., 
    74 F.3d 488
         (4th Cir. 1996) (distinguishing Barnhart and holding that
    (continued...)
    32                                          Nos. 01-3888 & 02-1152
    e.
    There is one final Second Circuit case that bears comment.
    In Mattel, Inc. v. Goldberger Doll Manufacturing Co., 
    365 F.3d 133
    (2d Cir. 2004), the Second Circuit rejected the idea that
    a particular expression of features on a doll’s face was not
    subject to copyright protection. The case arose out of the
    alleged copying of the facial features of Mattel’s Barbie dolls
    by Goldberger Doll Manufacturing when creating its
    “Rockettes 2000” doll. On Goldberger’s motion for sum-
    mary judgment, the district court held that “copyright
    protection did not extend to Barbie’s eyes, nose, and mouth .
    . . .” 
    Id. at 134.
    The Second Circuit reversed. Although it did
    not speak specifically in terms of conceptual separability,
    the court’s reasoning is nevertheless instructive; it stated:
    The proposition that standard or common features are
    not protected is inconsistent with copyright law. To
    merit protection from copying, a work need not be
    particularly novel or unusual. It need only have been
    “independently created” by the author and possess
    “some minimal degree of creativity.” Feist Publ’ns, Inc.
    11
    (...continued)
    mammal taxidermy mannequins are “sculptural works”
    rather than “useful articles” because their utilitarian aspects
    serve “merely to portray the appearance” of the animal). . . .
    We conclude that fish mannequins even if considered
    “useful articles,” are useful insofar as they “portray the[ir]
    appearance.” 17 U.S.C. § 101. That makes them
    copyrightable.
    
    Id. at 323
    (internal citation omitted). Thus, the Second Circuit
    distinguished fish mannequins from human mannequins;
    however, it did so on the basis that the fish mannequins were not
    “useful articles” as that term is defined in § 101, not on the basis
    that, although useful, the artistic aspects were physically or
    conceptually separable from the useful aspects of the article.
    Nos. 01-3888 & 02-1152                                         33
    v. Rural Tel. Serv. Co., 
    499 U.S. 340
    , 345 (1991). . . . There
    are innumerable ways of making upturned noses, bow
    lips, and widely spaced eyes. Even if the record had
    shown that many dolls possess upturned noses, bow
    lips, and wide-spread eyes, it would not follow that
    each such doll—assuming it was independently created
    and not copied from others—would not enjoy pro-
    tection from copying.
    
    Id. at 135
    (footnotes and parallel citations omitted). Addi-
    tionally, the court noted the scope of the copyright protec-
    tion that the Barbie dolls enjoyed:
    The copyright does not protect ideas; it protects only the
    author’s particularized expression of the idea. Thus,
    Mattel’s copyright in a doll visage with an upturned
    nose, bow lips, and widely spaced eyes will not prevent
    a competitor from making dolls with upturned noses,
    bow lips, and widely spaced eyes, even if the competi-
    tor has taken the idea from Mattel’s example, so long as
    the competitor has not copied Mattel’s particularized
    expression. An upturned nose, bow lips, and wide eyes
    are the “idea” of a certain type of doll face. That idea
    belongs not to Mattel but to the public domain. But
    Mattel’s copyright will protect its own particularized
    expression of that idea and bar a competitor from
    copying Mattel’s realization of the Barbie features.
    
    Id. at 136
    (citations omitted).
    C. Application
    Each of these cases differs in the object at issue and the
    method by which the court evaluated whether the object
    was entitled to copyright protection. Yet, each court at-
    34                                    Nos. 01-3888 & 02-1152
    tempted to give effect to “the expressed congressional intent
    to distinguish copyrightable applied art and uncopy-
    rightable industrial design.” 
    Kieselstein-Cord, 632 F.2d at 993
    ;
    see also Carol 
    Barnhart, 773 F.2d at 417-18
    (reviewing legisla-
    tive history in detail and concluding that, although “copy-
    right protection has increasingly been extended to cover
    articles having a utilitarian dimension,” Congress did not
    intend all useful articles that are “aesthetically satisfying or
    valuable” to be copyrightable); Brandir 
    Int’l, 834 F.2d at 1145
    (adopting Professor Denicola’s test that makes
    copyrightability dependent upon “the extent to which the
    work reflects artistic expression uninhibited by functional
    considerations” (internal quotation marks and citations
    omitted)); Superior Form 
    Builders, 74 F.3d at 494
    (distinguish-
    ing the animal mannequins at issue from “aesthetically
    pleasing articles of industrial design”).
    The Second Circuit cases exhibit a progressive attempt to
    forge a workable judicial approach capable of giving mean-
    ing to the basic Congressional policy decision to distinguish
    applied art from uncopyrightable industrial art or design. In
    Kieselstein-Cord, the Second Circuit attempted to distinguish
    artistic expression from industrial design by focusing on the
    present use of the item, i.e., the “primary ornamental
    aspect” versus the “subsidiary utilitarian function” of the
    object at 
    issue. 632 F.2d at 993
    . In Carol Barnhart, the Second
    Circuit moved closer to a process-oriented approach:
    What distinguishes those [Kieselstein-Cord] buckles
    from the Barnhart forms is that the ornamented surfaces
    of the buckles were not in any respect required by their
    utilitarian functions; the artistic and aesthetic features
    could thus be conceived of as having been added to, or
    superimposed upon, an otherwise utilitarian article. The
    unique artistic design was wholly unnecessary to
    performance of the utilitarian function. In the case of the
    Nos. 01-3888 & 02-1152                                         35
    Barnhart forms, on the other hand, the features claimed
    to be aesthetic or artistic, e.g., the life-size configuration
    of the breasts and the width of the shoulders, are
    inextricably intertwined with the utilitarian feature, the
    display of clothes. Whereas a model of a human torso,
    in order to serve its utilitarian function, must have some
    configuration of the chest and some width of shoulders,
    a belt buckle can serve its function satisfactorily without
    any ornamentation of the type that renders the
    Kieselstein-Cord buckles 
    distinctive. 773 F.2d at 419
    . Thus, it was the fact that the creator of the
    torsos was driven by utilitarian concerns, such as how dis-
    play clothes would fit on the end product, that deprived the
    human torsos of copyright protection.
    This process-oriented approach for conceptual separabil-
    ity—focusing on the process of creating the object to deter-
    mine whether it is entitled to copyright protection—is more
    fully articulated in Brandir and indeed reconciles the earlier
    case law pertaining to conceptual separability.
    [T]he approach is consistent with the holdings of our
    previous cases. In Kieselstein-Cord, for example, the
    artistic aspects of the belt buckles reflected purely aes-
    thetic choices, independent of the buckles’ function,
    while in Carol Barnhart the distinctive features of the
    torsos—the accurate anatomical design and the sculpted
    shirts and collars—showed clearly the influence of
    functional concerns. Though the torsos bore artistic
    features, it was evident the designer incorporated those
    features to further the usefulness of the torsos as man-
    nequins.
    
    Brandir, 834 F.2d at 1145
    .
    36                                    Nos. 01-3888 & 02-1152
    Furthermore, Brandir is not inconsistent with the more
    theoretical rendition of Judge Newman in his Carol Barnhart
    dissent—that “the requisite ‘separateness’ exists whenever
    the design creates in the mind of an ordinary observer two
    different concepts that are not inevitably entertained
    
    simultaneously.” 773 F.2d at 422
    . When a product has
    reached its final form as a result of predominantly func-
    tional or utilitarian considerations, it necessarily will be
    more difficult for the observer to entertain simultaneously
    two different concepts—the artistic object and the utilitarian
    object. In such circumstances, Brandir has the added benefit
    of providing a more workable judicial methodology by
    articulating the driving principle behind conceptual
    separability—the influence of industrial design. When the
    ultimate form of the object in question is “as much the result
    of utilitarian pressures as aesthetic choices,” “[f]orm and
    function are inextricably intertwined,” and the artistic
    aspects of the object cannot be separated from its utilitarian
    aspects for purposes of copyright protection. 
    Brandir, 834 F.2d at 1147
    .
    Conceptual separability exists, therefore, when the artistic
    aspects of an article can be “conceptualized as existing
    independently of their utilitarian function.” Carol 
    Barnhart, 773 F.2d at 418
    . This independence is necessarily informed
    by “whether the design elements can be identified as re-
    flecting the designer’s artistic judgment exercised independ-
    ently of functional influences.” 
    Brandir, 834 F.3d at 1145
    . If
    the elements do reflect the independent, artistic judgment of
    the designer, conceptual separability exists. Conversely,
    when the design of a useful article is “as much the result of
    utilitarian pressures as aesthetic choices,” 
    id. at 1147,
    the
    useful and aesthetic elements are not conceptually separa-
    ble.
    Nos. 01-3888 & 02-1152                                      37
    Applying this test to the Mara mannequin, we must
    conclude that the Mara face is subject to copyright protec-
    tion. It certainly is not difficult to conceptualize a human
    face, independent of all of Mara’s specific facial features,
    i.e., the shape of the eye, the upturned nose, the angular
    cheek and jaw structure, that would serve the utilitarian
    functions of a hair stand and, if proven, of a makeup model.
    Indeed, one is not only able to conceive of a different face
    than that portrayed on the Mara mannequin, but one easily
    can conceive of another visage that portrays the “hungry
    look” on a high-fashion runway model. Just as Mattel is
    entitled to protection for “its own particularized expression”
    of an “upturned nose[], bow lips, and widely spaced eyes,”
    
    Mattel, 365 F.3d at 136
    , so too is Heerlein (and, therefore,
    Pivot Point as assignee of the copyright registration) entitled
    to have his expression of the “hungry look” protected from
    copying.
    Mara can be conceptualized as existing independent from
    its use in hair display or make-up training because it is the
    product of Heerlein’s artistic judgment. When Passage
    approached Heerlein about creating the Mara sculpture,
    Passage did not provide Heerlein with specific dimensions
    or measurements; indeed, there is no evidence that
    Heerlein’s artistic judgment was constrained by functional
    considerations. Passage did not require, for instance, that
    the sculpture’s eyes be a certain width to accommodate
    standard-sized eyelashes, that the brow be arched at a
    certain angle to facilitate easy make-up application or that
    the sculpture as a whole not exceed certain dimensional
    limits so as to fit within Pivot Point’s existing packaging
    system. Such considerations, had they been present, would
    weigh against a determination that Mara was purely the
    product of an artistic effort. By contrast, after Passage met
    with Heerlein to discuss Passage’s idea for a “hungry-look”
    model, Heerlein had carte blanche to implement that vision
    38                                    Nos. 01-3888 & 02-1152
    as he saw fit. Consequently, this is not a situation, such as
    was presented to the Second Circuit in Carol Barnhart, in
    which certain features (“accurate anatomical design and the
    sculpted shirts and collars”) were included in the design for
    purely functional reasons. 
    Brandir, 834 F.2d at 1145
    . Further-
    more, unlike “the headless, armless, backless styrene torsos”
    which “were little more than glorified coat-racks used to
    display clothing in stores,” 
    Hart, 86 F.3d at 323
    , the creative
    aspects of the Mara sculpture were meant to be seen and
    admired. Thus, because Mara was the product of a creative
    process unfettered by functional concerns, its sculptural
    features “can be identified separately from, and are capable
    of existing independently of,” its utilitarian aspects. It
    therefore meets the requirements for conceptual separability
    and is subject to copyright protection.
    Conclusion
    The Mara mannequin is subject to copyright protection.
    We therefore must reverse the summary judgment in favor
    of Charlene Products and Mr. Yau; the case is remanded for
    a trial on Pivot Point’s infringement claim. Furthermore,
    because Charlene Products and Mr. Yau have not prevailed
    on the merits at this point, the judgment of the district court
    with respect to attorneys’ fees must be vacated. The cross-
    appeal with respect to attorneys’ fees is moot. Pivot Point
    may recover its costs in this court.
    REVERSED AND REMANDED; CROSS-APPEAL DISMISSED
    Nos. 01-3888 & 02-1152                                       39
    KANNE, Circuit Judge, dissenting. Writing for the majority,
    Judge Ripple has applied his usual thorough and scholarly
    approach to this difficult intellectual property problem;
    however, I cannot join the majority opinion because I am
    not persuaded that the “Mara” mannequin is copyrightable.
    All functional items have aesthetic qualities. If copyright
    provided protection for functional items simply because of
    their aesthetic qualities, Congress’s policy choice that gives
    less protection in patent than copyright would be under-
    mined. See American Dental Ass’n v. Delta Dental Plans Ass’n,
    
    126 F.3d 977
    , 980 (7th Cir. 1997).
    The majority rightly assumes that Mara is a “useful ar-
    ticle” as defined in 17 U.S.C. § 101. Opinion at 13. To receive
    copyright protection as a “sculptural work,” then, Mara
    must come within the narrow restrictions placed on “useful
    articles” in the definition of pictorial, graphic, and sculp-
    tural works:
    [T]he design of a useful article . . . shall be considered a
    . . . sculptural work only if, and only to the extent that,
    such design incorporates . . . 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. § 101 (emphasis added). As the district court
    noted, the statute requires, on its face, that sculptural fea-
    tures must be separately identified from the utilitarian
    aspects of the article (“conceptual separability”) and they
    must exist independently from the utilitarian aspects of the
    article (“physical separability”) in order to receive copyright
    protection. As to whether both conceptual and physical
    separability are required for copyrightability, most courts
    and commentators have concluded that only one or the
    other test is appropriate. But that issue is not presented here
    because Mara is not copyrightable regardless of whether
    both or either is applied.
    40                                      Nos. 01-3888 & 02-1152
    Taking physical separability first, the district court used
    examples from case law to illustrate that the sculptural
    features in many useful items can be physically removed
    from the object and sold separately without affecting the
    functionality of the useful article. See, e.g., Mazer v. Stein, 
    347 U.S. 201
    (1954) (holding that a sculpture of a dancer carved
    into the base of a lamp may be copyrighted); Kieselstein-Cord
    v. Accessories by Pearl, Inc., 
    632 F.2d 989
    (2d Cir. 1980)
    (holding that decorative belt buckles could be copyrighted
    as separate objects sold not to hold up one’s pants).
    Mara, on the other hand, has only functional attributes.
    Thus, any physical separation of a portion of her would not
    be independent of her utilitarian aspects. She is sold to
    beauty schools as a teaching device; students style her hair
    and apply makeup as realistic training for such pursuits on
    live subjects. A mannequin head without a neck, or with
    different eyes and musculature, would not serve the utili-
    tarian purpose of applying makeup or teaching the art of
    matching hair styles to facial features. As the district court
    explained: “Beauty students style hair to flatter the face, not
    to be worn on featureless ovoids. The use of a mannequin
    head in training students of beauty schools lies in its aesthetic
    qualities.” There is nothing in Mara that we could physically
    remove that would not be part of Mara’s utility as a teach-
    ing aid. Like mannequins of human torsos, Carol Barnhart
    Inc. v. Economy Cover Corp., 
    773 F.2d 411
    , 418-19 (2d Cir.
    1985), mannequins of human faces are not physically
    separable from their functional purpose and are therefore
    not copyrightable.
    Next, the district court considered various restatements of
    the meaning of “conceptual separability” (whether features
    can be identified or conceived of separately from the
    utilitarian aspects) and applied the most appropriate one to
    Mara. Professor Goldstein, in his treatise, Copyright: Princi-
    Nos. 01-3888 & 02-1152                                       41
    ples, Law & Practice, presents a reasonable explanation of the
    statutory text: “a . . . sculptural feature incorporated in the
    design of a useful article is conceptually separable if it can
    stand on its own as a work of art traditionally conceived,
    and if the useful article in which it is embodied would be
    equally useful without it.” Mara has no conceptually
    separable features to which copyright protection could be
    granted. Her features are incapable of being identified
    separately from the utilitarian use of those features. Without
    features, the mannequin’s head and neck would be little
    more than an egg on a stick, useless for its intended pur-
    pose. Mara possesses neither physical nor conceptual
    separability.
    The majority, concluding that Congress intended “to state
    a single, integrated standard,” deduced that the standard
    must be “conceptual separability.” This may be correct, as
    it is very difficult to divine the distinction between physical
    and conceptual separability if those standards are properly
    stated. In my view, however, the majority’s explanation of
    conceptual separability lacks a basis in the statute. As the
    majority sees it, conceptual separability “exists . . . when the
    artistic aspects of an article can be conceptualized as
    existing independently of their utilitarian function.” Opin-
    ion at 36. The majority further explains that the way to
    determine if this is the case is to look to the process of
    design: if independent “artistic” choices were made in the
    sculpture’s creation, and such choices were not later sullied
    by the influence of industrial design, then some of the useful
    article is a conceptually separable sculpture and therefore
    copyrightable. Opinion at 36-37.
    Problematically, the majority’s test for conceptual separ-
    ability seems to bear little resemblance to the statute. The
    statute asks two questions: Does the useful article incorpo-
    rate “sculptural features that can be identified separately
    42                                    Nos. 01-3888 & 02-1152
    from the utilitarian aspects” of the article? And are these
    features “capable of existing independently” from the utili-
    tarian aspects? The copyright statute is concerned with
    protecting only non-utilitarian features of the useful article.
    To be copyrightable, the statute requires that the useful
    article’s functionality remain intact once the copyrightable
    material is separated. In other words, Pivot Point needs to
    show that Mara’s face is not a utilitarian “aspect” of the
    product “Mara,” but rather a separate non-utilitarian “fea-
    ture.” The majority, by looking only to whether the features
    could also “be conceptualized as existing independently of
    their utilitarian function” and ignoring the more important
    question of whether the features themselves are utilitarian
    aspects of the useful article, mistakenly presupposes that
    utilitarian aspects of a useful article can be copyrighted. If
    we took away Mara’s facial features, her functionality
    would be greatly diminished or eliminated, thus proving
    that her features cannot be copyrighted.
    Moreover, the “process-oriented approach,” advocated by
    the majority drifts even further away from the statute.
    Opinion at 35. The statute looks to the useful article as
    it exists, not to how it was created. I believe it simply is
    irrelevant to inquire into the origins of Mara’s eyes, cheek-
    bones, and neck. If such features have been fully incorpo-
    rated as functional aspects of the mannequin, then copyright
    does not provide protection. Even if we were to look at the
    “process” that led to the creation of Mara, it is undeniable
    that, from the beginning, Pivot Point intended Mara to serve
    a functional purpose and commissioned her creation to
    fulfill that purpose (not to create a work of art for aesthetic
    beauty).
    The majority, as evidenced by its emphasis on the fact that
    Charlene Products apparently copied Mara with its doll,
    “Liza,” seems unduly concerned in this context with
    Nos. 01-3888 & 02-1152                                        43
    Charlene’s questionable business practices. This is immate-
    rial to the determination of whether the Mara doll is pro-
    tected by copyright law. Importantly, other possible legal
    protections for Pivot Point’s intellectual property—design
    patent, trademark, trade dress, and state unfair competition
    law—are available to address the majority’s concerns.
    Copyright does not protect functional products. Charlene is
    free, under its own brand name, to copy and sell copies of
    useful articles that do not have patent protection. See, e.g.,
    TrafFix Devices, Inc. v. Marketing Displays, Inc., 
    532 U.S. 23
    (2001); Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 
    489 U.S. 141
    (1989); Sears, Roebuck & Co. v. Stiffel Co., 
    376 U.S. 225
    (1964). I fear that the majority’s opinion grants copyright
    protection to functional aspects of a useful article. I would,
    therefore, affirm the district court’s grant of summary
    judgment in favor of Charlene Products and Mr. Yau.
    A true Copy:
    Teste:
    _____________________________
    Clerk of the United States Court of
    Appeals for the Seventh Circuit
    USCA-02-C-0072—6-25-04
    

Document Info

Docket Number: 01-3888

Judges: Per Curiam

Filed Date: 6/25/2004

Precedential Status: Precedential

Modified Date: 9/24/2015

Authorities (18)

Norris Industries, Inc. v. International Telephone and ... , 696 F.2d 918 ( 1983 )

Carol Barnhart Inc. v. Economy Cover Corporation , 773 F.2d 411 ( 1985 )

Barry Kieselstein-Cord v. Accessories by Pearl, Inc. , 632 F.2d 989 ( 1980 )

mattel-inc-plaintiff-counter-defendant-appellant-v-goldberger-doll , 365 F.3d 133 ( 2004 )

forest-hart-sculptor-thomas-ray-dba-hartforms-research-mannikins-joseph , 86 F.3d 320 ( 1996 )

brandir-international-inc-v-cascade-pacific-lumber-co-dba-columbia , 834 F.2d 1142 ( 1987 )

Elizabeth C.O. Bellaver v. Quanex Corp./nichols-Homeshield , 200 F.3d 485 ( 2000 )

American Dental Association v. Delta Dental Plans ... , 126 F.3d 977 ( 1997 )

Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply ... , 74 F.3d 488 ( 1996 )

william-h-silk-v-city-of-chicago-william-batts-in-his-individual-and , 194 F.3d 788 ( 1999 )

Esquire, Inc. v. Barbara A. Ringer , 591 F.2d 796 ( 1978 )

Feist Publications, Inc. v. Rural Telephone Service Co. , 111 S. Ct. 1282 ( 1991 )

Mazer v. Stein , 74 S. Ct. 460 ( 1954 )

Sears, Roebuck & Co. v. Stiffel Co. , 84 S. Ct. 784 ( 1964 )

Celotex Corp. v. Catrett, Administratrix of the Estate of ... , 106 S. Ct. 2548 ( 1986 )

Bonito Boats, Inc. v. Thunder Craft Boats, Inc. , 109 S. Ct. 971 ( 1989 )

TrafFix Devices, Inc. v. Marketing Displays, Inc. , 121 S. Ct. 1255 ( 2001 )

Superior Form Builders v. Dan Chase Taxidermy Supply Co. , 851 F. Supp. 222 ( 1994 )

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