simple and obvious,175 and must be "found in the creative power of the mind." There is, however, no requirement that the material to be copyrighted have any widely known or uniform meaning.177 What are the possibilities of copyright of IC masks? Initially, it must be determined that the optical reticle or masks themselves are copyrightable subject matter. Section 10217 of the 1976 Copyright Act lists the requirements and categories of copyrightable material. First, the material must be an "original work of authorship."179 Second, it must be "fixed in any tangible medium of expression." "A work is 'fixed' 175 See, e.g., Tate Co. v. Jiffy Enterprises, Inc., 16 F.R.D. 571 (E.D.Pa. 1954) (instructions "apply hook to wall" held uncopyrightable). 176 Trade-Mark Cases, 100 U.S. 82, 94 (1879). “The writings which are to be protected are the fruits of intellectual labor...." Id. 177 In Reiss v. Nat'l Quotation Bureau, 276 F.717 (S.D.N.Y. 1921), Learned Hand upheld the copyright on the "Simplix Pocket Blank Code," a list of about 6,000 five-letter words each of which had no recognized meaning, but was capable of being pronounced. The code was to be used by those needing a private code; the users would assign their own meanings to each word. "I can see no reason why words should not be [constitutional "writings"] because they communicate nothing. They may have their uses for all that, aesthetic or practical, and they may be the production of high ingenuity, or even genius." Id. at 719. It is interesting to note the change in Judge Hand's conception of the scope of "writings" of section 4 of the 1909 Copyright Law. 17 U.S.C. § 4 (1970). Compare Reiss ("The [Copyright] act must therefore be understood as meaning to cover all those compositions which, under the Constitution, can be copyrighted at all." 216 F. at 718.) with Capitol Records, Inc. v. Mercury Recording Corp., 221 F.2d 657 (2d Cir. 1955). See also Hartfield v. Peterson, 91 F.2d 998 (2d Cir. 1937) (code book) ("[T]he compilation is the sum total of the words and phrases as arranged by the author and... the copyright is valid because of the originality of the combination.” Id. at 1000.); American Code Co., Inc. v. Bensinger, 282 F.829 (2d Cir. 1922). Courts have also upheld tables and indices of nonalphabetic symbols. See, e.g., Guthrie v. Curlett, 36 F.2d 694 (2d Cir. 1929); Edwards & Deutsch Lithographing Co. v. Boorman, 15 F.2d 35 (7th Cir. 1926). 17817 U.S.C. § 102(a)(1976) states: Copyright protection subsists... in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories: (1) literary works; (2) musical works, including any accompanying works; (3) dramatic works, including any accompanying music; (5) pictorial, graphic, and sculptural works; (6) motion pictures, and other audiovisual works; and 179" 'Original' in reference to a copyrighted work means that the particular work 'owes its origin' to the 'author'." Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102 (2d Cir. 1951). See also Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884); Wihtol v. Wells, 231 F.2d 550 (7th Cir. 1956). "Independent creation" is the key. 1 M. NIMMER, COPYRIGHT § 2.01[A] (rev. ed. 1978). in a tangible medium of expression when its embodiment is a copy ... is sufficiently permanent or stable to permit it to be perceived, reproduced or otherwise communicated for a period of more than transitory duration.180 The "Works" so "fixed" must be able to be perceived, reproduced or otherwise communicated directly or with machine aid.11 While nowhere in the act is a "work" defined, "works of authorship" "include" seven categories.182 It appears IC reticles and masks would fit at first glance into the category of "pictorial, graphic, and sculptural work."183 This category is defined to include "two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproduction, maps, globes, charts, technical drawings, diagrams, and models."184 This language alone would seem to make ample room for IC reticles and works. It is not difficult for the lawyer to envision words such as "applied art," "photographs," "technical drawings, diagrams, and models," as sweeping in IC masks. However, the next sentence creates the difficulties: Such works shall include works of artistic craftmanship 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.185 18017 U.S.C. § 101 (1976). 18117 U.S.C. § 102 (1976). 182 The term "include" is "illustrative and not limitative." 17 U.S.C. § 101 (1976). The Senate report on the 1976 Copyright Act adds that: the seven categories do not necessarily exhaust the scope of "original works of authorship" that the bill is intended to protect. Rather, the list sets out the general area of copyrightable subject matter, but with sufficient flexibility to free the courts from rigid or outmoded concepts of the scope of particular categories. The items are also overlapping in the sense that a work falling within one class may encompass works coming within some or all of the other categories. S. REP. No. 473, 94th Cong., 1st Sess. 52 (1975). [hereinafter cited as Senate Copyright Report]. 18317 U.S.C. § 102 (5) (1976). 18417 U.S.C. § 101 (1976). The Senate Copyright Report states that: The term is intended to comprise [maps, works of art, models or designs for works of art, reproductions of a work of art, drawings or plastic works of a scientific or technical character, photographs, and prints and pictorial illustrations including prints or labels used for articles of merchandise] in the present statute including not only "works of art" in the traditional sense but also works of graphic art and illustrations art reproduction, plans and drawings, photographs and reproductions of them, maps, charts, globes, and other cartographic works, works of these kinds intended for use in advertising and commerce, and work of "applied art."Id. at 53. 18517 U.S.C. § 101 (1976). "Useful article" is further defined as "an article having 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'." Thus, a useful article cannot be copyrighted, and the artistic aspects can only be copyrighted to the extent they can be separated from the utilitarian aspect. The "useful article" doctrine contained in the 1976 Copyright Act is a codifications of the leading case Mazer v. Stein.188 In Mazer, respondent had produced and sold1s lamps the bases of which were statuettes in the form of a Balinese dancer. He then submitted the statuette without any lamp components to the Copyright Office and secured registration of them. Respondent sold the lamps widely. Petitioner then proceeded to copy the lamp in its entirety. The Supreme Court upheld the lower court finding of infringement. The Court first examined the history of the Copyright Law191 and Copyright Office practice,192 and found the statuettes copyrightable 19 despite the fact that they were mass produced and marketed.194 The Court held the statuettes protected by copyright even though it was incorporated into the (utilitarian) lamp, 195 190 The "useful article" doctrine has evolved somewhat since Mazer. It is important to ascertain just how the law has evolved since section. 186ld. 187 H. R. REP. No. 1476, 94th Cong., 2d Sess. 105 (1976) [hereinafter cited as House Copyright Report.] See Senate Copyright Report, supra note 182, at 53. 188347 U.S. 201 (1954). 189 The act of sale amounted to a "publication" under the old Copyright Law 17 U.S.C. § 26 (1970). 190Stein v. Mazer, 204 F.2d 472 (4th Cir. 1953). The Fourth Circuit held: "A subsequent utilization of a work of art as an article of manufacture in no way affects the right of the copyright owner to be protected against infringement of the work of art itself." Id. at 477. 191 In particular, the Court noted that under the Act of 1870, copyrightable subject matter was defined as "any book, map, chart, dramatic or musical composition, engraving, cut, print, or photograph or negative thereof, or of a painting, drawing, chromo, statue, statuary, and of models or designs intended to be perfected as works of the fine arts." Act of July 8, 1870, ch. 130, § 86, 16 Stat. 212. Under the 1909 Copyright Law, this was changed to provide "[t]hat the works for which copyright may be secured under this Act shall include all the writings of an author." Act of March 4, 1909, ch. 320 § 4, 35 State. 1076. Thus, "[v]erbal distinction between purely aesthetic articles and useful works ended insofar as the statutory copyright language is concerned." 347 U.S. at 211. 192 The Copyright Office had registered statuary as "works of fine art" both before the 1909 Copyright Law and after. 347 U.S. at 211-12. 193ld. at 214. 1941d. at 218. 195ld. 113 of the 1976 Copyright Act.196 which deals expressly with the "useful article" doctrine, affords rights no greater or lesser than those afforded by law in effect on December 31, 1977. The case of Esquire, Inc. v. 196Section 113 of the 1976 Copyright Act, "Scope of exclusive rights in pictorial, graphic and sculptural works," states: (a) Subject to the provisions of subsection (b) and (c) of this section, the (c) In the case of a work lawfully reproduced in useful articles that have Subsection (a) recognizes that copyrightable designs may be reproduced on useful articles which otherwise might invalidate a copyright. An example might be the ornamental design on a ceiling tile. Subsection (b) preserves intact previously existing rights with respect to the making, distributing, or selling of a useful article described or portrayed in a copyrightable work. An example here would be the right to build a house (useful article) by one in lawful possession of a copy of the plans (copyrightable). See notes 221-23 infra and accompanying text. If IC masks and reticles were copyrightable, this section would apply to the right to make the chips given the lawful possession of a copy of the masks or reticles. Subsection (c) allows one to make, distribute, and display a photograph or picture of a useful article containing a copyrighted work in connection with advertisement, commentary, or news report. The House Copyright Report states: Section 113 deals with the extent of copyright protection in "works of applied art." This section takes as its starting point the Supreme Court's decision in Mazer v. Stein, 347 U.S. 201 (1954), and the first sentence of subsection (a) restates the basic principle established by that decision. The rule of Mazer, as affirmed by the bill, is that copyright in a pictorial, graphic, or sculptural work will not be affected if the work is employed as the design of a useful article, and will afford protection to the copyright owner against the unauthorized reproduction of his work in useful as well as non-useful articles.... [S]ubsection (a) of Section 113 raises questions as to the extent of copyright protection for a pictorial, graphic, or sculptural work that portrays, depicts, or represents an image of a useful article in such a way that the utilitarian nature of the article can be seen.... Section 113(b) reflects the Register's conclusion that "the real need is to make clear that there is no intention to change the present law with respect to the scope of protection in a work portraying a useful article as such." Ringer19 shows the present state of the doctrine of useful articles to be not much different from that at the time of Mazer. In Esquire, plaintiff brought an action of mandamus against the Register of Copyright to register its lighting fixture used in parking lots. It was not disputed that except for the solely utilitarian purpose of the light it would meet all the requirements for registration.198 The Copyright Office position was that no features of the lighting fixture could be identified separately from the shape of the intrinsically useful object and the design could not be identified separately as artwork.199 Under the regulation200 copyright was denied. The court issued the writ of mandamus a motion for summary judgment. The court found that the lights had two purposes, to decorate and to illuminate, and noted that art often has a utilitarian purpose. It was not for the Register of Copyright to set "any national standard of what constitutes art and the Section 113(c) provides that it would not be an infringement of copyright, where a copyright work has been lawfully published as the design of useful articles, to make, distribute, or display pictures of the articles in advertising, in feature stories about the articles, or in the news reports. House Copyright Report, supra note 187, at 105. The Senate originally adopted a definition of “pictorial, graphic and sculptural works" as including only "two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints, and art reproductions, maps, globes, charts, plans, diagrams, and models." Senate Copyright Report, supra note 182, at 3. The House changed the definition to its present form. House Copyright Report, supra note 187, at 54-55. The Report explained: In adopting this amendatory language, the Committee is seeking to draw as clear a line as possible between copyrightable works of applied art and uncopyrightable works of industrial design.... 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 appearance 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. Id. at 55. 197414 F. Supp. 939 (D.D.C. 1976), rev'd, 591 F.2d 796 (D.C. Cir. 1978). Esquire arose under the old Copyright Law. 17 U.S.C. §§ 1-216 (1970). 198414 F. Supp. at 940. 1991d. 20037 C.F.R. § 202.10(c) (1978) states: If the sole intrinsic function of the article is 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 Register of Copyrights stressed that this was a long-standing practice, expressed since 1910: "Production of the industrial arts utilitarian in purpose and character are not subject to copyright regestration, even if artistically made or ornamented." Rule 12(g), Copyright Office Rules and Regulations, Bull. No. 15 1910), at 8, quoted from Mazer v. Stein, 347 U.S. 201, 212 (1954). |