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In April 2004, the Second Circuit Court of Appeals reversed a district court's conclusion that the features of Mattel's “CEO Barbie” and “Neptune's Daughter Barbie” were not protected by copyright. With little discussion, the three judge panel unanimously held that while Mattel's “particularized expression” in a “doll visage with upturned nose, bow lips, and widely spaced eyes” does not prevent a competitor from creating dolls with upturned noses, bow lips and widely spaced eyes, it does bar a competitor from copying Mattel's “realization” of the particular Barbie's features. Mattel, Inc. v. Goldberger Doll Manufacturing Co., 365 F.3d 133, 136 (2d Cir. 2004).
Shortly after that decision was published, the Seventh Circuit Court of Appeals in Pivot Point International, Inc. v. Charlene Products, Inc. had a much more difficult time determining the copyright protection afforded to a very similar product. 372 F.3d 913 (7th Cir. 2004). In Pivot Point, the manufacturer of mannequin heads for use in makeup and hairstyling practice sued another manufacturer that had made a virtually exact copy of Pivot Point's “Mara” mannequin head, made to portray a model's “hungry look.” In a lengthy opinion, the Court of Appeals reversed the lower court decision (by Judge Frank H. Easterbrook of the Court of Appeals, who had been sitting by designation) and ruled that the mannequin's facial features were copyrightable.
Why was the Pivot Point facial design a much more difficult case under copyright law? Because, unfortunately for Pivot Point, it was considered useful.
Copyright Protections for Three-Dimensional Works of Art
Though copyright law protects “pictoral, graphic and sculptural works,” it only protects “useful objects” 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.” Thus, for a useful object, protection only goes so far as the aspects that are separate from the object's utilitarian function.
The Copyright Act defines a “useful article” as “an article having an 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.” (Emphasis added.) Thus, because the CEO Barbie's function is “merely to portray the appearance” of a young female CEO with a slim shapely body, blond hair, upturned nose, bow lips, and widely spaced eyes, such an article is not “useful,” and therefore is entitled to full copyright protection.
On the other hand, because the mannequin head in Pivot Point was to be used, at least in part, in the application of makeup for cosmetology practice, the facial features were found to be “useful” and entitled to be protected only to the extent that such features could “be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”
Traditional Approaches to 'Separability' of Non-Utilitarian Features
Though the copyright statute does not expound on what it means for a feature to be able to be “identified separately,” it is well established that either physical or conceptual separability will suffice. In general, it is much easier to determine whether features are physically separable and capable of existing independently of a utilitarian object, such as a fanciful top on a bottle stopper, or a hood ornament on a car.
Fashioning a test for conceptual separability has proven more difficult for courts. The court in Pivot Point considered some of the various tests that courts and commentators have used: 1) the artistic features are “primary” and the utilitarian features “subsidiary,” Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980); 2) the useful article “would still be marketable to some significant segment of the community simply because of its aesthetic qualities,” Melville B. Nimmer & David Nimmer, 1 Nimmer on Copyright '2.08 [B][3], at 2-101 (2004); 3) the article “stimulates in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function,” Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 422 (2d Cir. 1985) (Newman, J., dissenting); 4) the artistic design was not significantly influenced by functional considerations, Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987); 5) the artistic features “can stand alone as a work of art traditionally conceived, and … the useful article in which it is embodied would be equally useful without it,” Goldstein, 1 Copyright '2.5.3, at 2:67; and 6) the artistic features are not utilitarian, see William F. Patry, 1 Copyright Law & Practice 285 (1994).
Seventh Circuit Expands Protections for Applied Art
The Court of Appeals in Pivot Point began by assuming, though with some skepticism, that the district court correctly determined that the mannequin head was a “useful” article. The court also noted that the scope of protection for three-dimensional works of art has repeatedly expanded, from only fine art in 1870, through the inclusion of “works of artistic craftsmanship” in 1948 and the inclusion of separately identifiable features of “useful” articles in the 1976 Copyright Act.
The court relied heavily upon the Second Circuit decision in Brandir International, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142 (2d Cir. 1987) in which a bicycle rack designed by an artist was held not protectable under copyright because its “form and function [were] inextricably intertwined.” Brandir, 834 F.2d at 1142. The Seventh Circuit quoted the Second Circuit for the principle that conceptual separability turns on “'whether the design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences.'” Pivot Point, 372 F.3d at 931 (quoting Brandir, 834 F.3d at 1145).
Purporting to adopt the Brandir test, the Seventh Circuit greatly expanded the scope of protection, rephrasing the test as follows: “If the elements do reflect the independent, artistic judgment of the designer, conceptual separability exists. Conversely, when the design of a useful article is as much the result of utilitarian pressure as aesthetic choices, the useful and aesthetic elements are not conceptually separable.” Id. at 931. Though only changing the language slightly, it appears to propose a preponderance test; designs are protectable if they were chosen more for their aesthetic reasons than for their utilitarian function. If designs are more or “as much the result” of utilitarian concerns, they would not be protectable.
Applying this new test to the mannequin heads, the court took another giant step toward expanding protection for utilitarian designs.
The court concluded that the mannequin's facial features were protectable because one can not only “conceive of a different face than that portrayed on the Mara mannequin, but one can easily conceive of another visage that portrays the 'hungry look.'” Id. at 931. Thus, the court stated that Mara “can be conceptualized as existing independent from its use in hair display or make-up training because it is the product of [the designer's] artistic independent judgment.” Id.
It is unclear why the court considered it relevant that one could conceive of a “different face” with the same utility. Though not referenced by the court, the Compendium II of Copyright Practices states that in “applying the test of separability … the fact that the [object's] shape could be designed differently” is not relevant. U.S. Copyright Office, Compendium II of Copyright Practices, '505.05 (1984). Further, in its application of the separability test, the court referred to protection of the Barbie dolls in Mattel v. Goldberger, which was not a case that discussed separability.
For highly stylized utilitarian objects, especially minimalist designs, it would be almost impossible to separate out where the utilitarian function ends and the artistic features begin, but most could easily be conceived of with a “different” design, and without any doubt the designs are the product of significant independent artistic judgment. Would these designs be protectable under this new Seventh Circuit test? It is not clear yet.
Will Courts Follow the Seventh Circuit Lead?
One Rhode Island district court early in 2005 purported to adopt the test from Pivot Point, which it called “a refreshingly clear approach,” but then reached a conclusion that seems to be quite at odds with the Seventh Circuit application. In Bonazoli v. R.S.V.P. Int'l, Inc., 353 F. Supp. 2d 218 (D.R.I. 2005), the court held that the design of measuring spoons, where the bowl of each spoon was made in the shape of a heart and the handle in the shape of an arrow shaft, was not protectable under copyright.
The court stated that “because an ordinary observer would never view [the] spoons without apprehending the design of a measuring spoon, any result other than the one this Court reaches … would be inconsistent with the test of conceptual separability espoused … in Pivot Point.” Bonazoli, 353 F. Supp.2d at 224-25 n. 5. Thus, the Bonazoli court, which claimed it was adopting the test in Pivot Point, seemed to revert to older Second Circuit language, such as from the Barnhart dissent, which evaluated whether the artistic elements stimulate in the mind a concept separate from the utilitarian function.
In another recent decision, Stanislawski v. Jordan, 337 F. Supp. 2d 1103 (E.D. Wisc. 2004), the plaintiff had created picture frames with designs on them, such as a cruise ship or bowling ball crashing into pins, and more fanciful designs with phrases such as “our family.” The court relied on Pivot Point for articulating the test for conceptual separability, stating that the useful and aesthetic elements would not be conceptually separable if the design was determined “as much by utilitarian dictates as by aesthetic choices.” Id. at 1112. The court held that the frames' artistic elements, such as the bowling ball crashing into bowling pins, were protectable and, focusing on the preponderance test from Pivot Point, stated the designs “seem to have been predominantly the results of aesthetic choices.” Id. (Emphasis added.)
Practical Concerns and Tips
In light of the Pivot Point decision on conceptual separability, the Seventh Circuit and some lower courts may be indicating a willingness to expand the scope of protection for useful articles, especially when faced with what appears to be a “knock-off” product. While it remains to be seen if the language in Pivot Point will lead to a lasting change in the law of copyright of artistic features on utilitarian objects, practitioners who are aware of the decision and how it differs from previous cases will be better able to serve their clients.
In counseling clients on designing products to maximize protection, simple adjustments, such as slightly raising the designs off the background (as were the protectable elements of the frames or facial features) or having the ornamental features in a different color, may aid a court in conceptually separating the design from the function. Also, if the final design was chosen based on aesthetic (as opposed to functional) concerns, it may be useful to keep records to show “different” designs that were not chosen. These could be used as evidence that the design process was driven by aesthetic concerns and aid a court to “conceive of a different design,” as the Seventh Circuit found persuasive. Also, when bringing an infringement action based on a utilitarian object, if possible, the Seventh Circuit may prove to be the friendliest to plaintiffs seeking broader protection.
In April 2004, the Second Circuit Court of Appeals reversed a district court's conclusion that the features of Mattel's “CEO Barbie” and “Neptune's Daughter Barbie” were not protected by copyright. With little discussion, the three judge panel unanimously held that while Mattel's “particularized expression” in a “doll visage with upturned nose, bow lips, and widely spaced eyes” does not prevent a competitor from creating dolls with upturned noses, bow lips and widely spaced eyes, it does bar a competitor from copying Mattel's “realization” of the particular
Shortly after that decision was published, the Seventh Circuit Court of Appeals in Pivot Point International, Inc. v. Charlene Products, Inc. had a much more difficult time determining the copyright protection afforded to a very similar product. 372 F.3d 913 (7th Cir. 2004). In Pivot Point, the manufacturer of mannequin heads for use in makeup and hairstyling practice sued another manufacturer that had made a virtually exact copy of Pivot Point's “Mara” mannequin head, made to portray a model's “hungry look.” In a lengthy opinion, the Court of Appeals reversed the lower court decision (by Judge
Why was the Pivot Point facial design a much more difficult case under copyright law? Because, unfortunately for Pivot Point, it was considered useful.
Copyright Protections for Three-Dimensional Works of Art
Though copyright law protects “pictoral, graphic and sculptural works,” it only protects “useful objects” 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.” Thus, for a useful object, protection only goes so far as the aspects that are separate from the object's utilitarian function.
The Copyright Act defines a “useful article” as “an article having an 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.” (Emphasis added.) Thus, because the CEO Barbie's function is “merely to portray the appearance” of a young female CEO with a slim shapely body, blond hair, upturned nose, bow lips, and widely spaced eyes, such an article is not “useful,” and therefore is entitled to full copyright protection.
On the other hand, because the mannequin head in Pivot Point was to be used, at least in part, in the application of makeup for cosmetology practice, the facial features were found to be “useful” and entitled to be protected only to the extent that such features could “be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”
Traditional Approaches to 'Separability' of Non-Utilitarian Features
Though the copyright statute does not expound on what it means for a feature to be able to be “identified separately,” it is well established that either physical or conceptual separability will suffice. In general, it is much easier to determine whether features are physically separable and capable of existing independently of a utilitarian object, such as a fanciful top on a bottle stopper, or a hood ornament on a car.
Fashioning a test for conceptual separability has proven more difficult for courts. The court in Pivot Point considered some of the various tests that courts and commentators have used: 1) the artistic features are “primary” and the utilitarian features “subsidiary,”
Seventh Circuit Expands Protections for Applied Art
The Court of Appeals in Pivot Point began by assuming, though with some skepticism, that the district court correctly determined that the mannequin head was a “useful” article. The court also noted that the scope of protection for three-dimensional works of art has repeatedly expanded, from only fine art in 1870, through the inclusion of “works of artistic craftsmanship” in 1948 and the inclusion of separately identifiable features of “useful” articles in the 1976 Copyright Act.
The court relied heavily upon the
Purporting to adopt the Brandir test, the Seventh Circuit greatly expanded the scope of protection, rephrasing the test as follows: “If the elements do reflect the independent, artistic judgment of the designer, conceptual separability exists. Conversely, when the design of a useful article is as much the result of utilitarian pressure as aesthetic choices, the useful and aesthetic elements are not conceptually separable.” Id. at 931. Though only changing the language slightly, it appears to propose a preponderance test; designs are protectable if they were chosen more for their aesthetic reasons than for their utilitarian function. If designs are more or “as much the result” of utilitarian concerns, they would not be protectable.
Applying this new test to the mannequin heads, the court took another giant step toward expanding protection for utilitarian designs.
The court concluded that the mannequin's facial features were protectable because one can not only “conceive of a different face than that portrayed on the Mara mannequin, but one can easily conceive of another visage that portrays the 'hungry look.'” Id. at 931. Thus, the court stated that Mara “can be conceptualized as existing independent from its use in hair display or make-up training because it is the product of [the designer's] artistic independent judgment.” Id.
It is unclear why the court considered it relevant that one could conceive of a “different face” with the same utility. Though not referenced by the court, the Compendium II of Copyright Practices states that in “applying the test of separability … the fact that the [object's] shape could be designed differently” is not relevant. U.S. Copyright Office, Compendium II of Copyright Practices, '505.05 (1984). Further, in its application of the separability test, the court referred to protection of the Barbie dolls in Mattel v. Goldberger, which was not a case that discussed separability.
For highly stylized utilitarian objects, especially minimalist designs, it would be almost impossible to separate out where the utilitarian function ends and the artistic features begin, but most could easily be conceived of with a “different” design, and without any doubt the designs are the product of significant independent artistic judgment. Would these designs be protectable under this new Seventh Circuit test? It is not clear yet.
Will Courts Follow the Seventh Circuit Lead?
One Rhode Island district court early in 2005 purported to adopt the test from Pivot Point , which it called “a refreshingly clear approach,” but then reached a conclusion that seems to be quite at odds with the
The court stated that “because an ordinary observer would never view [the] spoons without apprehending the design of a measuring spoon, any result other than the one this Court reaches … would be inconsistent with the test of conceptual separability espoused … in Pivot Point.” Bonazoli, 353 F. Supp.2d at 224-25 n. 5. Thus, the Bonazoli court, which claimed it was adopting the test in Pivot Point, seemed to revert to older Second Circuit language, such as from the Barnhart dissent, which evaluated whether the artistic elements stimulate in the mind a concept separate from the utilitarian function.
In another recent decision,
Practical Concerns and Tips
In light of the Pivot Point decision on conceptual separability, the Seventh Circuit and some lower courts may be indicating a willingness to expand the scope of protection for useful articles, especially when faced with what appears to be a “knock-off” product. While it remains to be seen if the language in Pivot Point will lead to a lasting change in the law of copyright of artistic features on utilitarian objects, practitioners who are aware of the decision and how it differs from previous cases will be better able to serve their clients.
In counseling clients on designing products to maximize protection, simple adjustments, such as slightly raising the designs off the background (as were the protectable elements of the frames or facial features) or having the ornamental features in a different color, may aid a court in conceptually separating the design from the function. Also, if the final design was chosen based on aesthetic (as opposed to functional) concerns, it may be useful to keep records to show “different” designs that were not chosen. These could be used as evidence that the design process was driven by aesthetic concerns and aid a court to “conceive of a different design,” as the Seventh Circuit found persuasive. Also, when bringing an infringement action based on a utilitarian object, if possible, the Seventh Circuit may prove to be the friendliest to plaintiffs seeking broader protection.
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