APPENDIX II.-FURTHER MATERIALS FROM THE COPYRIGHT OFFICE

COPYRIGHT PROTECTION FOR APPLIED DESIGNS

I.

THE COPYRIGHT ACT OF 1976

January 1985

A. Statutory Provisions.

Section 102 of the present Copyright Act, the Act of 1976, title 17 of the United States Code, establishes copyright protection in "original works of authorship fixed in any tangible medium", specifically including works of art under the phrase "pictorial, graphic and sculptural works." The statutory definition of pictorial, graphic and sculptural works, with slight changes, embodies the language of the Copyright Office's former work of art regulations, issued in 1956 and 1959. The Copyright Act now provides

that

"Pictorial, graphic, and sculptural works" include twodimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, technical drawings, diagrams, and models. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian 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. [17 U.S.C. 101] (Empha

sis added.)

Moreover, a definition of "useful article" is also included in section 101

of the Act:

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 "useful article." (Emphasis added.)

Thus the design of an article having any useful function can only be

considered a pictorial, graphic or sculptural work if it incorporates artis

tic 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].

B. Continuity of the Copyrightability Standard from the Act of 1909 to the Act of 1976.

Clear legislative history supports the view that the copyrightability standard applied under the old Act (title 17 U.S.C. in effect on December 31, 1977) and clarified by the court in Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C. Cir. 1978), cert. denied, 440 U.S. 908 (1979), is the same standard embodied in the new Copyright Act. House Report No. 94-1476, pages 54-58, expresses this point and provides, as well, a helpful explanation of the principle of separability in determining whether a utilitarian article contains copyrightable subject matter.

The Committee has added language to the definition of "pictorial, graphic, and sculptural works" in an effort to make clearer the distinction between works of applied art protectable under the bill and industrial designs not subject to copyright protection. The declaration that "pictorial, graphic, and sculptural works" include "works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned" is classic language; it is drawn from Copyright Office regulations promulgated in the 1940's and expressly endorsed by the Supreme Court in the Mazer case.

The second part of the amendment states 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." A "useful article" is defined as "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." This part of the amendment is an adaptation of language added to the Copyright Office Regulations in the mid-1950's in an effort to implement the Supreme Court's decision in the Mazer case.

In adopting this amendatory language, the Committee is seeking to draw as clear a line as possible between copyrightable works of applied art and uncopyrighted works of

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industrial design. A two-dimensional painting, drawing, or
graphic work is still capable of being identified as such
when it is printed on or applied to utilitarian articles
such as textile fabrics, wallpaper, containers, and the
like. The same is true when a statue or carving is used to
embellish an industrial product or as in the Mazer case is
incorporated into a product without losing its ability to
exist independently as a work of art. On the other hand,
although the shape of an industrial product may be aesthe-
tically satisfying and valuable, the Committee's intention
is not to offer it copyright protection under the bill.
Unless the shape of an automobile, airplane, ladies' dress,
food processor, television set or any other industrial pro-
duct contains some element that, physically or conceptually,
can be identified as separable from the utilitarian aspects
of that article, the design would not be copyrighted under
the bill. The test of separability and independence from
"the utilitarian aspects of the article" does not depend
upon the nature of the design-that is, even if the appear-
ance of an article is determined by esthetic (as opposed to
functional) considerations, only elements, if any, which can
be identified separately from the useful article as such are
copyrightable. And, even if the three-dimensional design
contains some such element (for example, a carving on the
back of a chair or a floral relief design on silver flat-
ware), copyright protection would extend only to that ele-
ment, and would not cover the over-all configuration of the
utilitarian article as such. [H. REP. NO. 1476, 94th Cong.,
2d Sess. (1976) at 54-55].

II. JUDICIAL AND ADMINISTRATIVE BACKGROUND

Section 5(g) of the Copyright Act of 1909, (17 U.S.C. in effect on December 31, 1977), specified that works of art were eligible for copyright. In its initial regulations under this Act, issued in 1910, the Copyright Office provided that

"Productions of the industrial arts utilitarian in purpose and character are not subject to copyright registration, even if artistically made or ornamented."

With a minor modification, referring to the design patent law, this regulation remained in effect until 1948.

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Copyright Office regulations in effect on December 31, 1977, (37
Paragraph (a) of the regulations,

C.F.R., $202.10) defined "works of art."

which was adopted in 1948, read:

WORKS OF ART (CLASS G)

(a) General. This class includes published or unpublished works of artistic craftsmanship, insofar as their form but not their mechanical or utilization aspects are concerned, such as artistic jewelry, enamels, glassware, and tapestries, as well as works belonging to the fine arts, such as paintings, drawings, and sculpture.

This general definition excluded the utilitarian aspects of a work from copyright protection as a work of art, but did not establish a precise test for differentiating protected artistic designs from nonprotected designs.

The 1948 regulation was upheld by the Supreme Court in the landmark case of Mazer v. Stein, 347 U.S. 201 (1954). The Court held that a work of art (a statuette of a female Balinese dancer) did not lose its right to protection under the copyright law when it was incorporated in a utilitarian article (for example, as the base of a lamp) and reproduced in a substantial number of copies. Moreover, the potential availability of design patent

protection did not foreclose copyright protection.

While the Copyright Office had filed an amicus brief supporting copyright in the Stein statuette, and the Court upheld the Office's 1948 regulation, the decision in Mazer was interpreted by same as opening the door of the copyright law to an even broader class of applied designs those where function and aesthetic appearance tend to merge. In reaction to this pressure for increased protection of designs, the Copyright Office in

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1959 issued a clarifying regulation in which the "separability" test was explicitly stated for the first time. The "separability" test now codified in the current Copyright Act was expressed in this way:

(c) If the sole instrinsic function of an article is its utility, the fact that the article is unique and attractively shaped will not qualify it as a work of art. However, if the shape of a utilitarian article incorporates features, such as artistic sculpture, carving, or pictorial representation, which can be identified separately and are capable of existing independently as a work of art, such features will be eligible for registration.

The "separability" test set forth in the regulations was upheld by the court in Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C. Cir. 1978). The Circuit Court considered whether the Register had adopted a permissible interpretation of the regulation in refusing to register designs of outdoor lighting fixtures. The court agreed with the Register's view that Congress, in the Copyright Act of 1909, adopted a policy against copyrighting industrial designs. The Register's reading of $202.10(c) was characterized as "a reasonable and well-supported interpretation." 591 F.2d at 800. The interpretation was held to reflect both administrative expertise and consistent application.

More recently, the 11th Circuit applied the separability test and agreed with the Copyright Office that the design of a wire wheel cover by Norris Industries did not qualify as a work of art since there were no artistic features that could exist independently of the useful article. Norris Industries, Inc. v. International Telephone and Telegraph Corp. and Ladd, 696 F.2d 918 (11th Cir. 1983).