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.12 It appears IC reticles and masks would fit at first glance into the category of "pictorial, graphic, and sculptural work." 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." "14 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. 18: 18017 U.S.C. § 101 (1976). 18117 U.S.C. § 102 (1976). 182The 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 codification1s of the leading case Mazer v. Stein.18 In Mazer, respondent had produced and sold 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 Law and Copyright Office practice,192 and found the statuettes copyrightable 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. 1 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. 18347 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. 101 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. 192The Copyright Office had registered statuary as "works of fine art" both before the 1909 Copyright Law and after. 347 U.S. at 211-12. 193Id. at 214. 194Id. 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 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." Ringer 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). pleasing forms of the Esquire fixtures are entitled to the same recognition afforded more tradiional sculpure."21 The court acknowledged policy considerations of allowing copyright on theretofore uncopyrightable useful articles,202 but found the lighting fixture within the Mazer holding. The court of appeals reversed.203 The court, per Judge Bazelon, rejected Esquire's argument that since the sole function of the lighting fixtures, "works of modernistic form sculpture," was not utility, the fixtures should be copyrightable. The court accorded Copyright Office regulations great weight and noted that evidence indicated a long standing practice of disallowing industrial designs. After concluding that the Copyright Office interpretation of the utilitarian object regulation was correct,20s the court proceeded to draw further support from repeated congressional rejection of copyright for utilitarian objects as later expressed in the 1976 Copyright Act. The court noted that Title II of the original Senate version of the 1976 Copyright Act,209 which was to protect ornamental design of useful articles,210 had been excised by 201414 F. Supp. at 941. 202The true difficulty which the Register envisions is the prospect of registering myriads of industrial designs of everything from automobiles to bathtubs to dresses. The consequent possibility of up to 56 years of protection and resulting inhibition upon competitive activity... is highly undesireable." Id. 203 Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C. Cir. 1978). 204Id. at 800 (citing brief for appellee at 5). 20537 C.F.R. § 202.10(c) (1978). See note 200 supra. The language of the definition of "pictorial, graphic, and sculptural works" finally adopted in the 1976 Copyright Act was amended by the House to include the useful articles doctrine in substantially the same form as Section 202.10(c). The original Senate version had only included "two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, plans, diagrams, and models." See House Copyright Report, supra note 187, at 54, 191. See also 17 U.S.C. § 101 (1976). 206591 F.2d at 801. 207ld. 208Id. at 800-01. 209Senate Copyright Report, supra note 182, at 39. 210Section 201 of Title II provided: (a) The author or other proprietor of an original ornamental design of a useful article may secure the protection provided by this title upon complying with the subject to the provision hereof. (b) For the purpose of this title (1) A "useful article" is an article which in normal use has an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article which normally is a part of a useful article shall be deemed to be a useful article. (2) The "design of a useful article", hereinafter referred to as a "design", consists of those aspects or elements of the article including its two-dimensional or three-dimensional features of shape and surface, which make up the appearance of the article. |