708 MINNESOTA LAW REVIEW [Vol. 67:707 fered the possibility of protection for the ornamental design of a useful product. Their integration into a general patent regime directed primarily at mechanical rather than aesthetic innova. tion, however, severely undermined their practical utility.5 Consequently, alternative proposals have become a congressional fixture,6 spawning a raft of conflicting academic analy sis. The failure to win more specialized protection has encouraged efforts to assimilate design protection into the law of copyright. Indeed, even passage of a sui generis design statute would do little to deflect attempts to secure the more expansive monopoly offered by copyright.8 This Article examines the current status of useful articles under the Copyright Act of 19769 and proposes an alternative analysis of their copyrightability. Congress, borrowing heavily from prior administrative and judicial formulations, has constructed an elaborate mechanism to differentiate protectible "applied art" from unprotectible "industrial design." Thus, the Act rejects both wholesale inclusion and exclusion of utilitarian objects, leaving it to the courts to define and defend a middle ground. Against the backdrop of Justice Holmes's admonition to avoid judicial determinations of artistic merit or worth,10 5. See infra note 30. 6. See, e.g., S. 22, tit. II, 94th Cong., 1st Sess. §§ 201-235, 122 CONG. REC. 3856-59 (1975), reprinted in S. REP. No. 473, 94th Cong., 1st Sess. 39-47 (1975) [hereinafter cited as S. 22, tit. J. Counting unsuccessful design protection bills has become a popular pastime. See In re Nalbandian, 661 F.2d 1214, 1218 n.1 (C.C.P.A. 1981) (Rich, J., concurring) ("Records I made in the mid 50's show that, beginning in 1914, some 45 bills were introduced . . . ."); Dulin, Design Protection: Walking the Pirate Plank?, 12 BULL COPYRIGHT SOC'Y 321, 325 (1965) ("In the fifty years since 1914, 55 design protection bills have been introduced . . . ."); Note, Protection for the Artistic Aspects of Articles of Utility, 72 HARV. L. REV. 1520, 1520 (1959) (to date more than thirty-five such bills have been unsuccessfully introduced"); Comment, Trade Regulation: Legal Protection of Commercial Design, 1959 Wis. L Rev. 652, 662 ("During the period of 1914 to 1959, forty-eight bills were introduced. . . ."). "Since 1914, approximately seventy design protection bills have been introduced in Congress, none of which has been enacted into law." Esquire, Inc. v. Ringer, 591 F.2d 796, 800 n.12 (D.C. Cir. 1978), cert. denied, 440 U.S. 908 (1979). The list continues to grow. See H.R. 20, 97th Cong., 1st Sess. (1981), reprinted in 2 COPYRIGHT L REP. (CCH) 20,097 (1981). 7. The more recent articles are noted and summarized in COPYRIGHT OFFICE, BIBLIOGRAPHY ON DESIGN PROTECTION (Supp. 1976). 8. Recent design protection bills have carefully preserved the proprietor's right to rely on the copyright alternative. See, e.g., H.R. 20, 97th Cong., 1st Sess. § 927 (1981), reprinted in 2 COPYRIGHT L. REP. (CCH) | 20,097 (1981); S. 22, tit П, supra note 6, § 227. 9. Pub. L. No. 94-553, 90 Stat. 2541 (codified at 17 U.S.C. §§ 101-810 (1976)). 1983] COPYRIGHT 709 however, few touchstones developed. Yet, a discriminating approach is both defensible and desirable. Industrial design differs in important respects from the traditional subject matters of copyright, and presents a less compelling claim to the statutory monopoly. But it is unwise, if not in fact impossible, to exclude from the scope of copyright all works capable of serving some useful purpose. The attempts of the Congress, the Copyright Office, and the courts to delimit the boundaries of copyright in useful articles have been only partially successful. Their efforts have a transient quality conspicuous even in a legal regime populated by concepts as ephemeral as "idea," "expression," and "creativity." A good portion of the difficulty arises from the tendency to focus exclusively on the results of the creative effort. This Article suggests that it is the process of creation that distinguishes industrial design from applied art and other forms of authorship traditionally recognized by copyright law. L INITIAL ENCOUNTERS The uneasy relationship between copyright and utilitarian articles has its roots in a series of piecemeal additions to the statutory subject matter. The constitutional provision authoriz ing federal copyright legislation, with its reference to "Authors" and their "Writings," gives little hint of the scope of modern copyright law.11 The initial exercise of the copyright power in 1790 was confined to maps, charts, and books.12 In 1802, coverage was extended to "prints."13 Musical compositions were brought within the statutory framework in 1831,14 and photo one extreme, some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the paintings of Manet would have been sure of protection when seen for the first time. At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge. Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251-52 (1903) (Holmes, J.). See Mazer v. Stein, 347 U.S. 201, 214 (1954) ("Individual perception of the beautiful is too varied a power to permit a narrow or rigid concept of art."). 11. U.S. CONST. art. I, § 8, cl. 8. See generally W. DERENBERG, THE MEANING OF "WRITINGS" IN THE COPYRIGHT CLAUSE OF THE CONSTITUTION (Copyright Of fice Study No. 3, 1956), reprinted in 1 STUDIES ON COPYRIGHT 43 (Copyright Soc'y of the U.S.A. ed. 1963). 12. See Act of May 31, 1790, ch. 15, 1 Stat. 124 (current version at 17 U.S.C. §§ 101-810 (1976)). 13. Act of Apr. 29, 1802, ch. 36, 2 Stat. 171 (repealed 1813). 14 Act of Feb. 3, 1831, ch. 16, 4 Stat. 436 (repealed 1870). 710 MINNESOTA LAW REVIEW [Vol. 67:707 graphs followed in 1865.15 Not until 1870, when protection was extended to "painting, drawing, chromo, statue, statuary, and of models or designs intended to be perfected as works of the fine arts,"16 did three-dimensional objects gain protection. The emphasis on "fine arts," however, served to maintain a respectable distance between copyright and useful articles. Under the Copyright Act of 1909,17 the immediate precursor of the current statute, however, claims of copyright in utilitarian objects could not be so easily dismissed. Among the items eligible for copyright under the 1909 Act were those specified in section 5(g): "Works of art; models or designs for works of art."18 With the deletion of all reference to the "fine arts," a major barrier to copyright in the design of useful objects apparently fell. No logic could demonstrate that crystal wine glasses, pearl rings, or even handsome radio cabinets were not "works of art." The Copyright Office, 19 however, quickly moved to exclude useful articles from the scope of copyright by resurrecting the very distinction so recently abandoned by the Congress. In a 1910 regulation defining "works of art," the Copyright Office restricted the newly established classification to "the so-called fine arts," expressly excluding "[p]roductions of the industrial arts utilitarian in purpose and character."20 The "industrial arts," however, proved difficult to contain. In 1917, the Copyright Office amended the regulation to permit registration of "artistic drawings notwithstanding they may afterwards be utilized for articles of manufacture."21 By 1949, the breach was significantly wider: "This class includes published 15. Act of Mar. 3, 1865, ch. 126, 13 Stat. 540 (repealed 1870). 16. Act of July 8, 1870, ch. 230, § 86, 16 Stat. 198, 212 (repealed 1916). 17. Act of Mar. 4, 1909, ch. 320, 35 Stat. 1077 (current version at 17 U.S.C. § 102 (1976)). 18. Id. § 5(g). 19. The Copyright Office, under the direction of the Register of Copyrights, is responsible for all administrative functions and duties under the Copyright Act. 17 U.S.C. § 701 (1976). The Register of Copyrights is authorized to establish regulations for the administration of the Copyright Act. 17 U.S.C. § 702 (1976). 20. Works of Art. This term includes all works belonging fairly to the so-called fine.arts. (Paintings, drawings, and sculpture). Productions of the industrial arts utilitarian in purpose and character are not subject to copyright registration, even if artistically made or ornamented. No copyright exists in toys, games, dolls, advertising, novelties, instruments or tools of any kind, glassware, embroideries, garments, laces, woven fabrics, or any smaller articles. COPYRIGHT OFFICE, RULES AND REGULATIONS FOR THE REGISTRATION OF CLAIMS TO COPYRIGHT, BULL NO. 15, § 12(g) (1910). 21. 37 C.F.R. § 201.4(7) (1917). 1983] COPYRIGHT 711 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. . . ."22 Forty years after Congress had forsaken the limitation, the Copyright Office formally abandoned the attempt to restrict the reach of copyright to works of the "fine arts." A reference to "works of artistic craftsmanship" was all that remained of the barrier between copyright and the design of utilitarian products. Attention then shifted from administrative to judicial formulations. In 1954, the United States Supreme Court considered a copyright infringement claim involving china statuettes of Balinese dancing figures. The contestants in Mazer v. Stein 23 were rival lamp manufacturers. The copyright owner, with the addition of the appropriate hardware, employed the statuettes as bases for table lamps. The statuettes, sans sockets and wiring, were registered with the Copyright Office as "works of art" and "reproductions of a work of art."24 A competitor copied the figures and put them to a similar use. The defendants premised their response to the charge of infringement chiefly on the federal design patent law, which protects "any new, original and ornamental design for an article of manufacture."25 Only design patents, they argued, could monopolize the appearance of mass-produced utilitarian articles. The Court did not agree: "Neither the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted. We should not so hold."26 The contention that useful articles were beyond the limits of copyright was formally put to rest: The dichotomy of protection for the aesthetic is not beauty and utility but art for the copyright and the invention of original and ornamental design for design patents. We find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration. We do not read such a limitation into the copyright law.27 22. 37 C.F.R. § 202.10(a) (1949). 23. 347 U,S. 201 (1954). 24. See Copyright Act of 1909, ch. 320, §§ 5(g), 5(h), 35 Stat. 1077 (current version at 17 U.S.C. § 102 (1976)). 25. 35 U.S.C. § 171 (1976). See infra note 30. 26. 347 U.S. at 217. 27. Id. at 218. The Copyright Office had by this time registered a variety of utilitarian articles, including "book ends, clocks, lamps, door knockers, candlesticks, inkstands, chandeliers, piggy banks, sundials, salt and pepper shakers, fish bowls, casseroles, and ash trays." Id. at 221 (Douglas, J., concurring). Some of these items, however, may not be protected under the more intricate standard currently in effect. See infra notes 71-76 and accompanying text. 712 MINNESOTA LAW REVIEW [Vol. 67:707 Mazer, however, fell far short of a wholesale endorsement of copyright in the design of useful objects. The Court was quick to point out the narrow issue for decision: "The case requires an answer, not as to a manufacturer's right to register a lamp base but as to an artist's right to copyright a work of art intended to be reproduced for lamp bases."28 The statuettes, as works of art, were entitled to copyright. Neither prior nor subsequent use in utilitarian articles, nor the fact that they were conceived expressly for such an end, jeopardized that status. Utility and art were no longer mutually exclusive, but it was still only the latter that could command copyright. Mazer answered one question, yet wisely eschewed another. The use to which "works of art" are put is irrelevant, the Court declared, but the bounds of that statutory classification remained uncertain. A dancing figure qualified, but the Court had said nothing of the forms displayed by toasters or automobiles, or the designs of wedding gowns or belt buckles. Those seeking protection for the full range of industrial design could find comfort in the Court's echo of Justice Holmes: "Individual perception of the beautiful is too varied a power to permit a narrow or rigid concept of art."29 Yet to apply the statutory criterion, some conception of art, or more precisely some conception of section 5(g) "works of art," remained a necessity. Most of the suggested models, however, did not assimilate industrial design. Tests emphasizing aesthetic merit had little to recommend them. The "inventiveness" criterion of federal design patent law imposed a similar analysis in that regime with disastrous results.30 In the copyright sphere, most judges prudently 28. 347 U.S. at 205. 29. Id. at 214. 30. Since 1842, federal patent law has made express provision for the protection of ornamental designs. See Act of Aug. 29, 1842, ch. 263, 5 Stat. 54 (current version at 35 U.S.C. § 171 (1976)). Patents have issued for the design of objects ranging from hosiery reinforcements, Glen Raven Knitting Mills, Inc. v. Sanson Hosiery Mills, Inc., 189 F.2d 845 (4th Cir. 1951), to concrete mixer trucks, In re Koehring, 37 F.2d 421 (C.C.PA 1930). See C.F. Mueller Co. v. A. Zeregas Sons, 12 F.2d 517 (2d Cir. 1926) (design. patent on noodle shape invalid). Current law provides: "Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided." 35 U.S.C. § 171 (1976). The overlap between the subject matters of design patent and copyright raises the possibility of dual protection. Early case law put the creator to an election. See, e.g., In re Blood, 23 F.2d 772, 772 (D.C. Cir. 1927) (hosiery ticket); Louis De Jonge & Co. v. Breuker & Kessler Co., 182 F. 150, 152 (E.D. Pa. 1910) |