87

88

80

85

Thus it found plaintiff's work uncopyrightable for being no more than "the aggregation of well-known components to comprise an unoriginal whole." & Similarly, in Concord Fabrics v. Marcus Brothers Textile Corp., the same District Court found defendant's use of a similar design, consisting of a small square within the basic handkerchief and a circular, design therein, did not constitute infringement. It was "at worst" the appropriation of an unprotectable idea, said the court. And Gordon v. Warner Brothers Pictures, in dictum affirmed the non-copyrightability of the title "F.B.I. Story;" O'Hara v. Gardner Advertising, Inc., held plaintiff could have no copyright in the phrase "Have A Happy," even when used for advertising purposes; and H. M. Kolbe Co. v. Armgus Textile Co., contained dicta to the effect that ". a checkerboard configuration . . . does not possess even the modest originality that the copyright laws require." ." These cases echo the sentiments expressed by the Southern District of New York Court in the frequently cited opinion of Gardenia Flowers, Inc. v. Joseph Markovits, Inc., holding uncopyrightable the arrangement of plaintiffs plastic flowers. Announcing that both originality and creativity are prerequisites to statutory copyright in a work of art, the New York Court said: "Here there is no doubt that the corsages were completely lacking in creativity and originality. The arrangements of components in these corsages are no different from the arrangement of components in artificial and natural corsages which had been common and traditional in the trade for many years before plaintiff's were produced. . . .” “1

In another vein, courts have found several non-art works uncopyrightable where they consisted of listings or compilations of public domain elements, on grounds of their lack of originality. Thus the Fifth Circuit in 1970 denied the validity of plaintiff's copyrighted "Agreement" or business form in Donald v. Zack Meyer's T.V. Sales and Service. " In holding that the work lacked the minimum originality for statutory copyright protection, the court relied on the "sweat of his own brow" test of Amsterdam v. Triangle Publications, Inc.: 03 "... like the map in Amsterdam, Donald's form is nothing more than a mosaic of the existing forms, with no original piece added. The Copyright Act was not designed to protect such negligible efforts. We reward creativity and originality with a copyright but we do not accord copyright protection to a mere copycat."

These decisions are reminiscent of the earlier Circuit Court opinion in Morrissey v. Procter and Gamble. There, in the course of denying statutory copyright for a set of contest rules expressed in simple declaratory statements totaling about 100 words, the court said: ". . . When the uncopyrightable subject matter is very narrow, so that the 'topic necessarily requires,' [cites omitted] if not only one form of expression, at best only a limited number, to permit copyrighting would mean that a party or parties, by copyrighting a mere handful of forms, could exhust all possibilities of future use of the substance. In such circumstances it does not seem accurate to say that any particular form of expression comes from the subject matter. However, it is necessary to say that the subject matter would be appropriated by permitting the copyrighting of its expression."

To this writer. these opinions do not suggest copyright protection for any new classes of material akin to type fonts. They do, however, show a judicial willingness to recognize the copyrightability of original arrangements of substantial

ss Thid.

& Concord Fabrics v. Marcus Brothers Textile Corp., 161 U.S.P.Q. 31 (S.D.N.Y.), 409 F. 2d 1315 (2d Cir. 1969).

Gordon v. Warner Brothers Pictures, 161 U.S.P.Q. 315 (Cal. Dist. Ct. 1969).
O'Hara v. Gardner Advertising. Inc., 300 N.Y.S. 2d 441 (N.Y.S. Ct. 1969).

RS H. M. Kolbe Co. v. Armgus Textile Co., 315 F. 2d 70 (2d Cir. 1963).
Id., at 72.

90 Gardenia Flowers, Inc. v. Joseph Markovits. Inc., 280 F. Supp. 776 (S.D.N.Y. 1968). 91 Id., at 783, cited in Schrader, supra note 68. at 6.

93 Donald v. Zack Meyer's T. V. Sales and Service, 165 U.S.P.Q. 751 (5th Cir. 1970). 93 Amsterdam v. Triangle Publications, Inc.. 89 U.S.P.Q. 468 (3d Cir. 1951).

04 165 U.S.P.Q. 751. at 754: cf. Consumer Union of United States. Inc. v. Hobart Mfg. Co., 199 F. Supp. 860 (S.D.NY 1961) But see Pittway Corp. v. Rellable Alarms Mfg. Corp., 164 U.S.P.Q. 379 (E.D.N.Y. 1969), where the copyrightability of certain price lists was found to be an issue of fact which cannot be disposed of on summary judgment. Indicating that they might be protectible. The eight-page net price lists in question listed certain alarm systems and components. with columns indicating the catalog number, item description. unit price, quantity price and catalog page number of each.

Morrissey v. Procter & Gamble Co.. 379 F. 2d 675 (1st Cir. 1967).

De Id., at 678, cited in Schrader, supra note 68. at 24. But see Norton Printing Co. v. Augustana Hospital. 155 U.S.P.Q. 133 (N.D. I. 1967) (copyright in hospital forms upheld on grounds that they may convey information, as well as recording it); Cash Dividend Check Corp. v. Davis, 247 F. 2d 458 (9th Cir. 1957).

amounts of public domain elements, where the materials lend themselves to a variety of combinations or methods of presentation, and where the arrangement in question is recognizably different from those standard to the trade.

2. Office regulations o7

A brief history of pertinent Office Regulations may be useful in examining the interpretation of present Regulations and evaluating their soundness, particularly in the absence of clear legislative or judicial guidelines with respect to the copyrightability of the three species of typography. Two issues arise in this context: (1) how much originality and/or creativity is required for a work to be registrable as a work of art; and (2) are these standards affected if the work in question has a utilitarian function, and if so, how?

Of course, the applicability of the comments on utility will depend upon a particular reader's assessment of whether a type face, type font, or typography are "utilitarian objects" for copyright purposes. If one equates utilitarian objects with functional ones and views type characters as instruments or devices" for communicating written language, then they are utilitarian objects when they are grouped in word-forming or information-forming combinations and must meet the corresponding tests of copyrightability. But information-grouped characters are unique in that their function lies in their appearance; and, if one defines "utilitarian" as an object which conveys something more than its appearance, then type characters are not utilitarian and need not meet those standards to be registrable as works of art.

Office Regulations Before 1956

Beginning with the Regulations of 1890, copyright in works of art, followed the statutory prescription and was specifically restricted to works of fine arts." The 1890 Regulation stated: "The fine arts, for copyright purposes, including only painting and sculpture, and articles of mere ornamental and decorative art are referred to the Patent Office, as subjects for Design Patents.”

100

The reason behind the rule was apparently to exclude commercial art works and works of utilitarian value. Thus, the Directions for Securing Copyright published in March of 1899 provided: “. . . no article can be registered in the Copyright Office which cannot be classed under one or the other designation used in the law to indicate the articles subject to copyright protection. The words 'engraving', 'cut', and 'print' are understood to mean only a work of art, and the articles which they designate are subject to copyright only when they are articles sold or exchanged for their artistic value." 101

The exclusion of utilitarian articles from copyright registration was more clearly enunciated in the Directions of 1899, containing the first listing of articles not subject to copyright. Although neither type face nor typography was specifically mentioned, articles subject to patents for designs were, and continued to be, included in a similar list in every Regulation published from 1899 to 1905. In 1910, the format of the Regulations changed in response to the newly enacted Copyright Law of 1909. The Regulations now listed the works subject to copyright, including, inter alia, works of art (embracing only "works belonging to the so-called fine arts") and "prints and illustrations." The latter "comprise [d] all printed pictures not included in the various other classes enumerated above,” and the Regulation continued: “[a]rticles of utilitarian purpose do not become capable of copyright registration because they consist in part of pictures which in themselves are copyrightable. . . . Mere ornamental scrolls, combinations of lines and colors, decorative borders, and similar designs, or ornamental letters or

97 The material presented in this section is mainly gleaned from a memo I prepared earlier this year for Register Kaminstein, and one prepared by the Hend of the Arts Section in 1968. No further original research was done on the material covered in these memos. Memo from H. Oler to A. Kaminstein on "Provisions on Type Face or Typography In the pre-1956 Regulations of the Copyright Office," Feb. 8, 1971 (unpublished collection of Oler memos in the Copyright Office Library); memo from D. Schrader to files on "Survey of the Practices of the Copyright Office Re: Registration of 'Works of Art,'" Nov. 1968 (unpublished collection of Schrader memos in the Copyright Office Libṛary). 98 See M. Nimmer. Copyrights, Sec. 37.6 (1970).

Statutory copyright was first specifically granted to works of fine arts by the Copyright Act of 1870. M. Schrader, supra note 97, at 2.

100 Regulations of 1890, compiled, in Compilation of Regulations Concerning Copyright 1974-1956, at 4 (mimeo found in Copyright Office Library).

101 Regulations of 1890, compiled. in Compilation of Regulations Concerning Copyright 1874-1956, at 14 (mimeo found in Copyright Office Library).

forms of type are not included in the designation 'prints and pictorial illustrations.' Trademarks cannot be copyrighted nor registered in the Copyright Office."

19 103

That provision was reproduced verbatim in the second printed set of 1910 Regulations,1 ,103 but was changed in 1913. Although the 1913 Regulations still excluded "Productions of the industrial arts utilitarian in purpose and character," the literal exclusion of ornamental letters or forms of type was not present.

" 104

"Productions of the industrial arts utilitarian in purpose and character [were] not subject to copyright registration, even if artistically made or ornamented" from 1914 until 1917, when this provision was reformulated to read: "The protection of productions of the industrial arts utilitarian in purpose and character even if artistically made or ornamented depends upon action under the patent law; but registration in the Copyright Office has been made to protect artistic drawings notwithstanding they may afterwards be utilized for articles of manufacture."

105

This Regulation seemed to reflect [then] Register Solberg's view that a line should be drawn between copyright and design patent. For example, in a letter which typified his view, he stated: "It seems clear that in the case of any work of such a character that the protection which is desired is that provided for under the design patents Act cannot obtain that protection by any action taken under the provisions of the copyright law." 100

107

The 1917 provision remained until it was reworded in 1946, to the same effect. During the period of 1910 to 1937, Office practice manifested Solberg's view and refused registration to published works within the purview of design patent." The practice apparently did not preclude the registration of artistic drawings of designs which might later be embodied in a utilitarian article,108 nor, in rare cases, of articles of manufacture "where the purely artistic element either predominate[d] over the utilitarian element or [was] practically separable from it...." "100 But registrations in the former category were made with the warning that "such registration secured protection against copying of the drawing itself but presumably did not protect the design as embodied in an article of manufacture."

"110

111

Office practice during the term of Register Bouvé (1937-1944) became more restrictive concerning registration of artistic works which might have a utilitarian function. If a work served a useful purpose, “no amount of artistry—no matter how 'artistic' the thing may be-[could] change its purpose and make a work of art out of a utensil." " Drawings for utilitarian objects were registrable only in Class I; G registrations were refused, as was the description of the work as "design for work of art." 11 The philosophy behind this rule was expounded in a letter drafted by DeWolf for Bouvé's signature: "... It would be a serious matter for the Copyright Office to take administrative action which would cut the ground from under the feet of the many proponents of design copyright, including Members of Congress and the Patent Bar." 113

Further, "... An object of utility may in one sense justify the appellation of a work of art, but merely because a thing may be artistic or because an artist or any group of artists may consider it a work of art, if its purpose is utilitarian rather than ornamental or esthetic it has not been and will not be considered the subject of copyright registration in this Office." 114

102 Regulations of 1910. compiled. in Compilation of Regulations Concerning Copyright 1974-1956 (mimeo found in Copyright Office Library) (emphasis added).

103 Ibid.

104 Regulations of 1913. complied in Compilation of Regulations Concerning Copyright 1874-1956 (mimeo found in Copyright Office Library).

105 Regulations of 1917. compiled in Compilation of Regulations Concerning Copyright 1874-1956 (mimeo found in Copyright Office Library).

100 Letter from Register Solberg dated July 6, 1914, quoted in Schrader, supra note 97. at 6.

107 Schrader, supra note 97. at 4 et seq.

108 Schrader, supra note 97. at 11.

100 Letter from R. DeWolf. Acting Assistant Register of Copyrights, dated May 6, 1931, quoted in Schrader, supra note 97. at 14.

110 Schrader, supra note 97, at 12.

111 Memo from Register Bouvé to the Staff dated July 24, 1937, cited in Schrader, supra note 97. at 24.

112 Schrader, supra note 97. at 24.

113 Letter from Register Bouvé, dated December 23, 1937, cited in Schrader, supra note 97. at 25-6.

114 Letter from Register Bouvé, dated September 4, 1940, cited in Schrader, supra note 97, at 26.

The big change in Office policy with regards to works of art came with Register Warner's issuance of the 1948 Regulations, Section 202.8 of which included, as copyrightable works of art, works of "artistic craftsmanship": "Section 202.8 Works of art (Class G) (a) In general, "This class includes works of artistic craftsmanship, in so far as their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels, glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings, drawings and sculpture. Works of art and models or designs for works of art are registered in Class G on Form G, except published three-dimensional works of art which require Form GG." 115

Preparatory to the formulation of this new Regulation, Mr. Kaminstein, then Chief of the Examining Division, studied Office practice and court cases concerning works of art and recommended that the Regulations be changed to permit registration of works of "artistic craftsmanship" in so far as their form but not their utilitarian aspects were concerned. His conclusions on the role of the Office with regard to the registrability of these new types of materials may be significant for our study:

"Although the [court] decisions are not always well reasoned, they show a willingness to accept administrative practice in determining copyrightability and also indicate a somewhat more liberal position than that taken by the Office. The text writers are definitely critical of the present rule on works of art.

"It is my general feeling that the test of registrability ought be whether the work is a work of art, irrespective of whatever else it may be. Although I am aware of the difficulties involved in setting ourselves up as judges on this point, a task we do not particularly relish, I suggest that, with respect to any of the established art media, we require the very minimum of artistry, but that in any new category we attempt to apply a general low-grade' criteria. We will not sit in judgment on what purports to be a painting, but we will require an ash tray to be made artistically and we will require even more of dishes. We may accept something comparable to Cellini's masterpiece but not the ordinary run of salt cellars . . . the further we go from established art forms, the greater the necessity for the artistic element in the individual work." 118

On the basis of the new Regulation, the Office departed from previous practice and agreed to consider registration for works of "artistic craftsmanship" such as jewelry, in so far as their form but not their utilitarian aspects were concerned." At the same time, registration was discouraged for primarily utilitarian works and works which fell "within the industrial arts." principally on grounds that there was "great likelihood that design patent protection would be more nearly in order." 118

The Supreme Court opinion in 1954 put an end to the idea that copyright protection ceased once a work of art was embodied in a utilitarian article. It also expressed approval of the 1948 Regulation and its expansion of the work of art category. Thereafter, the Office agreed to register textile designs, though Register Fisher commented he would not further expand the classes of registrable art works." 110

In 1954, a new set of Office Practices was issued. It contained Miss Ringer's formulation of the "intrinsic nature of the item" and the "separable work of

115 Regulations of 1948. compiled in Compilation of Regulations Concerning Copyright 1874-1956 (mimeo found in Copyright Office Library).

118 Memo from A. Kaminstein, Chief of Examining Division, on registration for works of art, dated April 11, 1948. cited in Schrader. supra note 97, at 31-2 (emphasis added). The implied qualitative standard for non-established forms of art did not survive the Issuance of new Regulations in 1956. In fact, such artistic judgments are expressly rejected in a memo from A. Goldman, General Counsel, to Register Fisher on "Present Examining Practices Re: Works of Art" dated September 14, 1959. Following this memo and those initiated by Miss Ringer prior to drafting the new Regulations. the Office arguably followed a quantitative standard of the authorship necessary to support a recistration for all works of art, though the amount might increase if the item had a utilitarian aspect.

117 The Regulation did not expressly include textile designs, and the Office declined to register them until after the Supreme Court decision in Mazer v. Stein. 347 U.S. 201 (1954) (granting copyright protection to a statuette lamp base on grounds that it contained separable artistic authorship).

118 Memo from Mr. Cary to Register Fisher dated April 10, 1951, cited in Schrader, supra

note 97, at 32.

110 Schrader, supra note 97, at 36.

art" concepts which have determined the registrability of works of art with utilitarian aspects since 1954. Miss Schrader's survey concluded that the latter has prevented further extension of copyright into the industrial design field and has spawned a quantitative standard of the authorship necessary for registration of a work in Class G. It does not preclude registration for a work if it possesses separable artistic qualities; 120 but if “. . . the shape of an article, is dictated by, or is necessarily responsive to, the requirements of its utilitarian function, its shape, though unique and attractive, cannot qualify it as a work of art.

"Examples:

"(1) Machinery such as generators or lathes.

"(2) Tools such as saws or hammers.

“(3) Instruments, such as hypodermic needles, scalpels, calipers, or hair clippers."

121

These concepts were embodied in the Office Regulations published in 1956 and 1959, both of which prohibit, for want of sufficient original authorship, registration for "mere variations of typographic ornamentation, lettering for coloring..."

" 122

Copyright Office Regulation (1956)

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 utilitarian 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.

(b) In order to be acceptable as a work of art, the work must embody some creative authorship in its delineation or form. The registrability of a work of art is not affected by the intention of the author as to the use of the work, the number of copies reproduced, or the fact that it appears on a textile material or textile product. The potential availability of protection under the design patent law will not affect the registrability of a work of art, but a copyright claim in a patented design or in the drawings or photographs in a patent application will not be registered after the patent has been issued.

120 The validity of the separability text was recently affirmed by its recent application in the case of Ted Arnold. Ltd. v. Silvercraft Co., Inc., 259 F. Supp. 733 (S.D.N.Y. 1966). In considering the copyrightability of a pencil sharpener fashioned to simulate an antique telephone, the court said: "The telephone casing could be separate physically from the pencil sharpener. . . . An antique telephone is no more necessary to encase a pencil sharpener than a statuette is to support a lamp. . . . The telephone casing satisfies this requirement [of creative authorship]. It is not a copy of any real telephone. It is a composite creation, the result of library research and sketches of different types of early telephones. It is irrelevant that early telephones were strictly utilitarian. Plaintiff's version was not designed for the same use. 259 F. Supp. 733. 735."

121 Part IV of the Copyright Office Practices of October 1954, reproduced verbatim in Schrader, supra note 97.

123 Copyright Office Regulations, 37 C.F.R. 202.1 (a) (1956) (1959). The Second Circuit approved of the copyrightability standards contained in Regulation 202.1 (a) in dicta appearing in its opinion in Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F. 2d 541 (2d Cir. 1959). In upholding the copyright in photographs of products on commercial prints and labels, it said: "Not every commercial label is copyrightable; it must contain 'an appreciable amount of original text or pictorial material'. The Copyright Office does not regard as sufficient to warrant copyright registration 'familiar symbols or designs, mere variations of typographic ornamentation. lettering or coloring, and mere listing of ingredients or contents.' Although the publication of these views does not have the force of statutes, it is a fair summary of the law. 266 F. 2d 541, 544.”

That the Office publicly reaffirmed its position with regards to typography as recently as 1965 is demonstrated by statements contained in the published Reports of the Register of Copyrights on Copyright Law Revision. In the July 1961 Report, the following statement of policy appeared at page 11: ". we do not think that the language of the statute should be so broad as to include some things-typography, broadcast emissions, and industrial designs are possible examples-that might conceivably be considered the 'writings of an author' but are not intended by Congress to be protected under the Copyright Law. U.S. Government Printing Office, Report of the Register of Copyrights on Copyright Law Revision 11 (1961)." there

And the Register's later Supplementary Report contained the following: ". . are particular kinds of subject matter on the fringes of copyright which may be the 'writings of an author' in the constitutional sense and which Congress might one day want to protect, but which it does not see fit to protect now. Typography, certain industrial designs, and broadcast emissions are possible examples of this today."

(Both of these quotations appeared in a memo from Mark Lillis to Abraham Kaminstein on "Copyright Protection of Designs for Type Face", February 9, 1971, (unpublished inter-Office memo).