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(Christmas wrapping paper) (dicta), aff'd on other grounds, 191 F. 35 (3d Cir. 1911), afd, 235 U.S. 33 (1914). The Supreme Court in Mazer v. Stein, 347 U.S. 201, 217 (1954), noted the prior case law, but found it unnecessary to consider the election doctrine, because the plaintiff had not sought design patent protection. In 1974, the Court of Customs and Patent Appeals repudiated the concept of election in reversing a Patent and Trademark Office decision to reject a patent application for a previously copyrighted Spiro Agnew watch. In re Yardley, 493 F.2d 1389, 1394 (C.C.P.A. 1974). The Copyright Office, however, continues to refuse registration once a design patent has issued. 37 C.F.R. § 202.10(a) (1981). The position appears difficult to raționalize in view of section 102(a) of the Copyright Act, 17 U.S.C. § 102(a) (1976), which provides that copyright "subsists" in works "fixed in any tangible medium of expression." See Frijouf, Simultaneous Copyright and Patent Protection, 23 COPYRIGHT L SYMP. 99, 109-11 (1977); Note, Functional Works of Art: Copyright, Design Patent, or Both?, 3 COMM/ENT L.J. 83, 102-03 (1980).

Unlike copyright, with its modest requirements of originality, generally understood to be "little more than a prohibition of actual copying," Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 103 (2d Cir. 1951) (quoting HoagueSprague Corp. v. Frank C. Meyer Co., 31 F.2d 583, 586 (E.D.N.Y. 1929)), and some minimal degree of creativity or effort, see Denicola, Copyright in Collections of Facts: A Theory for the Protection of Nonfiction Literary Works, 81 COLUM. L. REV. 516, 520-22 (1981), the barriers to design protection are imposing. As a result of the novelty requirement, independent creation is not suffi cient. Rather, the design must produce a new visual impression, generally measured with reference to an ordinary observer. See 2 A. DELLER, WALKER ON PATENTS § 159 (1964). The design must also be "ornamental," thus necessitating at least a minimal assessment of its aesthetic impact. Id. § 160.

The reference in section 171 of the design patent law to provisions relating to inventions, however, introduces a more troublesome requirement. See 35 U.S.C. § 171 (1976). Section 103 of the patent statute prohibits the issuance of a patent when "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103 (1976). The "nonobviousness" test is a 1952 codification of the "inventiveness” standard generally applied to applications for both mechanical and design patents. See 2 A DELLER, Supra, § 161. Whatever utility the standard may have with respect to mechanical patents, however, it has been little short of ruinous in the design patent regime.

On a doctrinal level, application of the "person having ordinary skill in the art" standard in the design context has generated a semantic dispute between proponents of an "ordinary observer" standard and those who advocate an "ordinary designer" benchmark See In re Nalbandian, 661 F.2d 1214, 1216-17 (C.C.P.A 1981) (reviewing the conflicting case law). One suspects that the semantics have little substantive impact. "It is probably true. . . that . . . courts will, with phraseology of their own choosing, continue to find designs patentable or unpatentable according to their judicial 'hunches.'" Id. at 1218 (Rich, J., concurring). On a more fundamental level, an obviousness test for aesthetic contributions appears to demand the very artistic judgments and analysis wisely shunned by copyright law. But cf. Belding Heminway Co. v. Future Fashions, Inc., 143 F.2d 216, 217-18 (2d Cir. 1944) ("That there may be as outstanding aesthetic invention as there is mechanical, only barbarians would deny." Unfortunately, the barbarians cannot be relied on to recuse themselves.). The Commissioner of Patents and Trademarks has acknowledged that "the concept of unobviousness is not well suited to ornamental designs." Address by Commissioner of Patents and Trademarks Gerald Mossinghoff, ABA

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[Vol. 67:707 shunned the role of art critic.31 A more appealing approach was to turn to history in an attempt to cabin the reach of copyright. In one of the series of cases brought by the plaintiff in Mazer, the Ninth Circuit stated, "A thing is a work of art if it appears to be within the historical and ordinary conception of the term art."32 The rationale admitted statuettes, but excluded a cardboard photo holder.33 Although this formulation was perhaps an improvement over purely subjective evaluations of artistic merit, as a practical matter it could furnish little guidance in specific cases. With museums proudly displaying the pottery, weapons, furnishings, and other artifacts of preceding cultures, the sweep of the rationale. might well exceed the expectations of its proponents. Emphasis on a "colloquial rather than a philosophical significance"34 for

Patent, Trademark and Copyright Law Section Meeting (Aug. 8, 1981), quoted in in re Nalbandian, 661 F.2d 1214, 1219 (C.C.P.A. 1981).

Reliance on so subjective a standard inevitably has its price. "In final analysis it depends upon the judgment of the judge or judges who have the last say." Gold Seal Importers, Inc. v. Morris White Fashions, Inc., 124 F.2d 141, 143 (2d Cir. 1941) (invalidating design patent for lack of inventiveness). A study by the Patent and Trademark Office indicated that an astonishing 68% of design patents challenged in federal courts during the period from 1973 to 1977 were held invalid. PATENT AND TRADEMARK OFFICE, STUDY OF COURT DETERMINATIONS OF PATENT VALIDITY/INVALIDITY, 1973-1977, reprinted in 455 PAT. TRADEMARK & COPYRIGHT J. (BNA) D-1 - D-3 (1979). Although the sample produced by decisions to contest validity is undoubtedly biased toward questionable patents, the statistics clearly justify the ill repute generally attached to design patent law. The insecurity is particularly troubling in light of the effort and expense necessary to obtain issuance of a design patent.

Because of the necessity of evaluating novelty and nonobviousness, the patent application process is substantially more protracted than copyright registration procedures. In 1975, the average time between filing and issuance was reported to be about twenty-one months. COPYRIGHT OFFICE, SECOND SUPPLEMENTARY REPORT OF THE REGISTER OF COPYRIGHTS ON THE GENERAL REVI SION OF THE U.S. COPYRIGHT LAW: 1975 REVISION BILL 187 (Draft 1975) [hereinafter cited as SECOND SUPPLEMENTARY REPORT). Costs, including attorney's fees, can quickly become prohibitive for small enterprises, particularly when a number of new designs are to be introduced. It is hardly surprising that both the Copyright Office and the Patent and Trademark Office have urged the enactment of alternative design protection legislation. Id. at 186-87, 203; Address by Commissioner of Patents and Trademarks Gerald Mossinghoff, supra. 31. See, e.g., Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 243 (1903) (circus poster); Rushton v. Vitale, 218 F.2d 434, 436 (2d Cir. 1955) (chimpanzee doll); Pellegrini v. Allegrini, 2 F.2d 610, 611 (E.D. Pa. 1924) (miniature religious shrine).

32. Rosenthal v. Stein, 205 F.2d 633, 635 (9th Cir. 1953).

33. See Bailie v. Fisher, 258 F.2d 425, 426 (D.C. Cir. 1958). The historical approach to the "works of art" classification has also been championed in the academic literature. See Comment, supra note 6, at 660.

34. Vacheron & Constantin-Le Coultre Watches Co. v. Benrus Watch Co., 155 F. Supp. 932, 934 (S.D.N.Y. 1957), aff'd on other grounds, 260 F.2d 637 (2d Cir. 1958).

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"works of art" only transfered aesthetic judgments to a different jury. Moreover, given the selective additions to the statutory subject matter that preceded the "works of art" classification, there was no reason to suspect that the new category was intended to subsume every object that either curator or bumpkin might label "art."

In retrospect, Mazer v. Stein did little to clarify the issue of copyright in the design of commercial products; it merely enjoined the automatic excision of all utilitarian articles. Although the Copyright Office Regulations soon reflected the Court's narrow holding,35 the administrative response did not end with codification. Determined to close the door that Mazer left ajar, the Copyright Office sought a formulation that would accommodate Mazer, yet exclude the general realm of industrial design. After one aborted attempt,36 it settled on the "separability" standard that has come to dominate current analysis: 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 an. 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.37 Mazer had quickly become the limit of copyright in useful articles.

Even the guarded terms of Mazer and its regulatory progeny, however, brought major change. Overcoming a long-standing exclusion, 38 graphic designs adorning textiles were now securely within the subject matter of copyright.39 The regula

35. 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 availabil ity of protection under the design patent law will not affect the registra bility of a work of art. . .

37 C.F.R. § 202.10(b) (Supp. 1956) (current version at 37 C.F.R. § 202.10(a) (1981)).

36. See 37 C.F.R. § 202.10 (c) (Supp. 1956).

37. 37 C.F.R. § 202.10(c) (1959) (revoked Jan. 1, 1978, 43 Fed. Reg. 966 (1978)).

38. See, e.g., Cheney Bros. v. Doris Silk Corp., 35 F.2d 279, 280 (2d Cir. 1929) (dicta), cert. denied, 281 U.S. 728 (1930); Verney Corp. v. Rose Fabric Convert. ers Corp., 87 F. Supp. 802, 804 (S.D.N.Y. 1949). Cf. Kemp & Beatley, Inc. v. Hirsch. 34 F.2d 291, 292 (E.D.N.Y. 1929) (dress pattern).

39. See, e.g., Peter Fan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960); Peter Pan Fabrics, Inc. v. Candy Frocks, Inc., 187 F. Supp. 334, 335 (S.D.N.Y. 1960); Scarves by Vera, Inc. v. United Merchants & Manuf., Inc., 173 F. Supp. 625, 627 (S.D.N.Y. 1959); Peter Pan Fabrics, Inc. v. Brenda Fabrics, Inc., 169 F. Supp. 142, 143 (S.D.N.Y. 1959).

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[Vol. 67:707 tions said as much.40 Indeed, any two-dimensional graphic work could arguably be "identified separately" from the utilitarian article to which it was applied, and copyright registrations were issued in connection with graphic designs appearing on products ranging from shoe soles41 to dinnerware.42 Yet there were limits. When the graphic elements went beyond mere applique and became more intimately associated with the utilitarian features of the article, protection was denied.43

The test of separate identity and independent existence could be particularly troublesome when the copyright claim was directed at three-dimensional aspects of utilitarian articles. Some objects presented little difficulty. The "Flying Lady" hood ornament could be detached from the accompanying Rolls-Royce, yielding a perfectly independent statuette. With a bit more imagination, gargoyles could be mentally chiseled from pediments, and lamp shades and sockets stripped from dancing figures. The case law, however, presented greater challenges. For example, it seemed natural to extend protection tochildren's coin banks shaped in forms ranging from dogs44 to humans,45 despite the difficulty in identifying features "capable of existing independently." The "work of art" was the bank itself. If the overall shape of a cocker spaniel bank was protectible, could anything more than aesthetic prejudice exclude the overall shapes of tea kettles, home computers, or food processors? Other cases similarly undermined the administrative criterion. Copyright was upheld in a ring box with no men

40. See 37 C.F.R. § 202.10(b) (Supp. 1956) (current version at 37 C.F.R § 202.10(a) (1981)). See also supra note 35.

41. See SCOA Indus., Inc. v. Famolare, Inc., 192 U.S.P.Q. (BNA) 216 (S.D.N.Y. 1976).

42. See Syracuse China Corp. v. Stanley Roberts, Inc., 180 F. Supp. 527 (S.D.N.Y. 1960). Attempts to obtain copyright for two-dimensional designs on useful objects had met with some success even before Mazer. See, e.g., Richardson v. Miller, 20 F. Cas. 722 (C.C.D. Mass. 1877) (No. 11,791) (playing cards); William A. Meier Glass Co. v. Anchor Hocking Glass Corp., 95 F. Supp. 264 (W.D. Pa. 1951) ("loop" design on glassware). Cf. Ex parte Guild, 98 U.S.P.Q. (BNA) 464 (Pat. Off. Bd. App. 1952) (copyright registration on roof design).

43. See Eltra Corp. v. Ringer, 579 F.2d 294 (4th Cir. 1978) (type-face design); Vacheron & Constantin-Le Coultre Watches Co. v. Benrus Watch Co., 155 F. Supp. 932 (S.D.N.Y. 1957) aff'd on other grounds, 260 F.2d 637 (2d Cir. 1958) (appearance of watch face not copyrightable under initial post-Mazer regulation, 37 C.F.R. § 202.10(c) (Supp. 1956)).

44. See Royalty Designs, Inc. v. Thrifticheck Serv. Corp., 204 F. Supp. 702 (S.D.N.Y. 1962).

45. See Goldman-Morgen, Inc. v. Dan Brechner & Co., 411 F. Supp. 382 (S.D.N.Y. 1976).

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tion of separability,46 and registration issued for a series of molds used in the manufacture of ceramic figures.47 Yet such objects offered no obviously separable elements; the art lay in the articles themselves.

The gap between copyright and industrial design was further narrowed when copyright was recognized in an antique telephone shape used as the outer casing of a pencil sharpener.48 The court, concluding that the Copyright Office regulations did not preclude protection because "the telephone casing could be separated physically from the pencil sharpener,"49 declared the casing a "work of art" and enjoined the defendant from distributing a substantially similar product. But casings, covers, and cabinets could be removed from a host of commercial products, and the regulations offered little basis for distinctions.

Despite the shortcomings of the doctrinal formulations,50 both the courts and the Copyright Office maintained the conviction that copyright protection for the general design of commercial products was inappropriate. Efforts to achieve a general revision of the copyright law began within a year after the decision in Mazer v. Stein, and throughout the twenty-one years of legislative machinations that preceded the enactment of the current statute, the Copyright Office consistently counseled against the extension of copyright to industrial design.51

46. See Dan Kasoft, Inc. v. Gresco Jewelry Co., 204 F. Supp. 694 (S.D.N.Y. 1962), afd, 308 F.2d 806 (2d Cir. 1962).

47. See S-K Potteries & Mold Co. v. Sipes, 192 U.S.P.Q. (BNA) 537 (N.D. Ind. 1976) (no determination of copyright validity).

48. See Ted Arnold Ltd. v. Silvercraft Co., 259 F. Supp. 733 (S.D.N.Y. 1966). 49. Id.

50. The basic criterion applied by the Copyright Office to determine registrability as a work of art is the existence of artistic features which can be identified separately from any utilitarian article and which are capable of existing independently from the article as works of art. The difficulty of administering this criterion is one reason for the support given by the Copyright Office for specialized design legislation. Hearings on H.R. 2223 Before the Subcomm. on Courts, Civil Liberties, and the Administration of Justice of the House Comm. on the Judiciary, 94th Cong., 1st Sess. (1975) (Copyright Office Briefing Papers on Current Issues Raised by H.R. 2223, May 7, 1975), reprinted in 16 OMNIBUS COPYRIGHT REVISION LEGISLATIVE HISTORY 2051, 2066 (1977).

51. In the years since the Mazer decision, full protection under the copyright law has not proved inappropriate for "works of art" used as a design or decoration of useful articles. We do not believe, however, that it would be appropriate to extend the copyright law to industrial designs as such.

HOUSE COMM. ON THE JUDICIARY, 87TH CONG., 1ST SESS., COPYRIGHT LAW REVI SION, REPORT OF THE REGISTER OF COPYRIGHTS ON THE GENERAL REVISION OF THE U.S. COPYRIGHT LAW 13 (Comm. Print 1961).