Pivot Point Int'l v. Charlene Products

In the

United States Court of Appeals

For the Seventh Circuit

____________

Nos. 01-3888 & 02-1152

PIVOT POINT INTERNATIONAL, INCORPORATED,

Plaintiff-Appellant, Cross-Appellee,

v.

CHARLENE PRODUCTS, INCORPORATED and PETER YAU,

Defendants-Appellees, Cross-Appellants.

____________

Appeals from the United States District Court

for the Northern District of Illinois, Eastern Division.

1

No. 90 C 6933—Frank H. Easterbrook, Circuit Judge.

____________

ARGUED JUNE 6, 2003—DECIDED JUNE 25, 2004

____________

Before RIPPLE, KANNE and DIANE P. WOOD, Circuit Judges.

RIPPLE, Circuit Judge. Pivot Point International, Inc.

(“Pivot Point”), brought this cause of action against

Charlene Products, Inc., and its president Peter Yau (col-

1

United States Circuit Judge for the Seventh Circuit, sitting by

designation.

2 Nos. 01-3888 & 02-1152

lectively “Charlene”), for copyright infringement pursuant

to 17 U.S.C. § 501(b). The district court granted summary

judgment for the defendants on the ground that the copied

subject matter, a mannequin head, was not copyrightable

under the Copyright Act of 1976 (“1976 Act”), 17 U.S.C.

§ 101 et seq. For the reasons set forth in the following

opinion, we reverse the judgment of the district court

and remand the case for proceedings consistent with this

opinion.

I

BACKGROUND

A. Facts

Pivot Point develops and markets educational techniques

and tools for the hair design industry. It was founded in

1965 by Leo Passage, an internationally renowned hair de-

signer. One aspect of Pivot Point’s business is the design

and development of mannequin heads, “slip-ons” (facial

forms that slip over a mannequin head) and component hair

pieces.

In the mid-1980s, Passage desired to develop a mannequin

that would imitate the “hungry look” of high-fashion,

runway models. Passage believed that such a mannequin

could be marketed as a premium item to cutting-edge hair-

stylists and to stylists involved in hair design competitions.

Passage then worked with a German artist named Horst

Heerlein to create an original sculpture of a female human

head. Although Passage discussed his vision with Heerlein,

Passage did not give Heerlein any specific dimensional

requirements. From Passage’s description, Heerlein created

a sculpture in plaster entitled “Mara.”

Nos. 01-3888 & 02-1152 3

Wax molds of Mara were made and sent to Pivot Point’s

manufacturer in Hong Kong. The manufacturer created

exact reproductions of Mara in polyvinyl chloride (“PVC”).

The manufacturer filled the PVC form with a liquid that

expands and hardens into foam. The process of creating the

Mara sculpture and of developing the mannequin based on

the sculpture took approximately eighteen months.

In February of 1988, when Pivot Point first inspected the

PVC forms of Mara, it discovered that the mannequin’s

hairline had been etched too high on the forehead. The

manufacturer corrected the mistake by adding a second,

lower hairline. Although the first, higher hairline was vis-

ible upon inspection, it was covered with implanted hair.

The early PVC reproductions of Mara, and Pivot Point’s first

shipment of the mannequins in May of 1988, possessed the

double hairlines.

About the same time that it received its first shipment of

mannequins, Pivot Point obtained a copyright registration

for the design of Mara, specifically the bareheaded female

human head with no makeup or hair. Heerlein assigned all

of his rights in the Mara sculpture to Pivot Point. Pivot Point

displayed the copyright notice in the name of Pivot Point on

each mannequin.

Pivot Point enjoyed great success with its new mannequin.

To respond to customer demand, Pivot Point began market-

ing the Mara mannequin with different types and lengths of

hair, different skin tones and variations in makeup; how-

ever, no alterations were made to the facial features of the

mannequin. For customer ease in identification, Pivot Point

changed the name of the mannequin based on its hair and

skin color; for instance, a Mara mannequin implanted with

yak hair was called “Sonja,” and the Mara mannequin

implanted with blonde hair was called “Karin.”

4 Nos. 01-3888 & 02-1152

At a trade show in 1989, Charlene, a wholesaler of beauty

2

products founded by Mr. Yau, displayed its own “Liza”

mannequin, which was very close in appearance to Pivot

Point’s Mara. In addition to the strikingly similar facial

features, Liza also exhibited a double hairline that the early

Mara mannequins possessed.

On September 24, 1989, Pivot Point noticed Charlene for

copyright infringement. When Charlene refused to stop

importing and selling the Liza mannequin, Pivot Point filed

3

this action.

B. District Court Proceedings

Pivot Point filed a multi-count complaint in district court

against Charlene. It alleged violations of federal copyright

law as well as state-law claims; Charlene both answered the

complaint and counterclaimed. After extensive discovery,

Pivot Point filed a comprehensive motion for summary

judgment on its complaint and Charlene’s counterclaims.

Charlene filed several cross-motions for summary judgment

as well. The district court tentatively ruled on these motions

in July 2001 and issued a final ruling in October 2001.

1. Merits

In its opinion, the district court stated that “[t]he principal

dispute is whether a human mannequin head is copy-

rightable subject matter. If it is, then there must be a trial on

2

Mr. Yau was not unfamiliar with Pivot Point. Shortly before

founding Charlene Products in 1985, Mr. Yau had worked for

Pivot Point.

3

Charlene eventually obtained a copyright registration for its

Liza mannequin.

Nos. 01-3888 & 02-1152 5

the question whether Liza is a knock off of Mara.” R.401 at

1. The district court explained that, although sculptural

works are copyrightable under 17 U.S.C. § 102(a)(5), sculp-

tures that may be copyrighted are limited by the language

of 17 U.S.C. § 101, which provides in relevant part:

Such works shall include works of artistic craftsmanship

insofar as their form but not their mechanical or utilitar-

ian 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.

According to the district court, there was no question that

Mara was a sculpture. However, in the district court’s view,

the sculpture served utilitarian ends. “Students in beauty

schools practice styling hair on Mara’s head and may

practice other skills by applying makeup to Mara’s eyes,

lips, and cheeks. The parties dispute which functions are

primary.” R.401 at 2.

The district court then explored whether the artistic and

utilitarian aspects of Mara were “separable” for purposes of

the piece’s copyrightability: “The statutory separability

requirement confines copyright protection to those aspects

of the design that exist apart from its utilitarian value, and

that could be removed without reducing the usefulness of

the item.” Id. at 3. The district court observed that drawing

this line is particularly troublesome.

The statute, continued the district court, is generally

recognized to suggest two types of separability: physical

separability and conceptual separability. The district court

6 Nos. 01-3888 & 02-1152

explained that physical separability occurs when the orna-

mental nature of the object can be physically removed from

the object and that

[c]onceptual separability differs from physical separa-

bility by asking not whether the features to be copy-

righted could be sliced off for separate display, but

whether one can conceive of this process. Relying on

a comment in the House Report on the 1976 amend-

ments, the second circuit in Kieselstein-Cord [v.

Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980),]

purported to adopt conceptual separability as the ex-

clusive test (632 F.2d at 992, contrasting that approach

with Esquire [v. Ringer, 591 F.2d 796 (D.C. Cir. 1978)],

which opted for physical separability, 591 F.2d at

803-04). Why a court should repair to the legislative

history is unclear; the second circuit did not identify

any ambiguity in § 101 that needed to be resolved, and

a statement in the House Report that what appears

on the face of the statutory text to be two requirements

(physical and conceptual separability) should be ad-

ministered as just one is not a proposition that in to-

day’s legal climate can be indulged. The Supreme Court

does not permit the use of legislative history to alter, as

opposed to elucidate, a statutory text.

Id. at 4.

Despite this lack of statutory moorings, the district court

nevertheless reviewed the differing formulations for con-

ceptual separability and determined that the definition

proposed by Professor Paul Goldstein was the best one: “a

pictorial, graphic or sculptural feature incorporated in the

design of a useful article is conceptually separable if it can

stand on its own as work of art traditionally conceived, and

if the useful article in which it is embodied would be equal-

ly useful without it.” R.401 at 5 (quoting 1 Paul Goldstein,

Nos. 01-3888 & 02-1152 7

Copyright: Principles, Law & Practice § 2.5.3, at 109 (1989)).

The district court believed that the strength of this definition

“comes from the fact that it differs little, if at all, from the

test of physical separability embraced by the D.C. Circuit in

Esquire and by the majority in Carol Barnhart [Inc., v. Econ-

omy Cover Corp., 773 F.2d 411, 418 (2d Cir. 1985)].” Id.

Applying this test led the district court to conclude that

Mara cannot be copyrighted because, even though one

can conceive of Mara as a sculpture displayed as art, it

would not be equally useful if the features that Pivot

Point want to copyright were removed. So long as a

utilitarian function is makeup tutoring and practice and

the fact that Pivot Points sells Mara without eye or lip

coloring shows that this is a function even if not, in

Pivot Point’s view, the “primary” one—the utilitarian

value would be diminished by removing the aesthetic

features that Pivot Point wants to protect by copyright.

Id.

As a final matter, the district court distinguished two

cases, Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320

(2d Cir. 1996), and Superior Form Builders, Inc. v. Dan Chase

Taxidermy Supply Co., Inc., 74 F.3d 488 (4th Cir. 1996), which

upheld the copyrightability of animal and fish mannequins.

The district court found the Hart case unpersuasive, but

concluded that “one cannot say of Mara what the fourth

circuit said of animal mannequins: Mara is valued not for

‘its own appearance’ but for what it enables students to do

and learn. Mara is a ‘useful article’ as § 101 and Superior

Form Builders deploy that term.” Id. at 6.

2. Fee Petition

Although fees are available under the 1976 Act, the

district court’s order made no provision for fees. Charlene,

8 Nos. 01-3888 & 02-1152

therefore, sought an award of attorneys’ fees of approxi-

mately $421,915 pursuant to 17 U.S.C. § 505. Charlene

submitted its fees to Pivot Point and sought to confer and

exchange information as required by Northern District of

Illinois Local Rule 54.3(d). Pivot Point would not participate

in this exercise on the basis that any fee request would be

untimely because Charlene had missed the fourteen-day

deadline for filing a fee motion set forth in Federal Rule of

Civil Procedure 54(d)(2)(B).

Charlene then moved for an instruction from the district

court ordering Pivot Point to participate in the fee request

process but the district court refused. It explained that its

“opinion and declaratory judgment resolving this case on

the merits did not make any provision for attorneys’ fees.”

R.413 at 1. Because the judgment did not contain an order

with respect to an attorneys’ fee petition, the district court

did not believe Local Rule 54.3 was applicable. Instead, the

parties were bound by the fourteen-day deadline set forth

in Federal Rule 54 (d)(2)(B). Furthermore, the district court

believed that its reading of Local Rule 54.3—as not extend-

ing the time period allowed in Federal Rule 54—saved the

local rule because otherwise it would be inconsistent with

Federal Rule 54 and therefore invalid pursuant to Federal

4

Rule 83.

4

Federal Rule of Civil Procedure 83 provides:

(1) Each district court, acting by a majority of its district

judges, may, after giving appropriate public notice and an

opportunity for comment, make and amend rules governing

its practice. A local rule shall be consistent with—but not

duplicative of—Acts of Congress and rules adopted under 28

U.S.C. §§ 2072 and 2075, and shall conform to any uniform

numbering system prescribed by the Judicial Conference of

(continued...)

Nos. 01-3888 & 02-1152 9

Finally, the district court acknowledged that it had the

discretion to extend the time to file such a motion; however,

it stated that it was “not even slightly disposed to grant any

[extension], because the parties knew well before October 2

what the judgment was likely to provide.” Id. at 1.

Pivot Point now appeals from the district court’s sum-

mary judgment in favor of Charlene; Charlene appeals from

the district court’s judgment with respect to its attorneys’

fee petition.

II

ANALYSIS

A. Standard of Review

This court reviews de novo a district court’s grant of

summary judgment. See Silk v. City of Chicago, 194 F.3d 788,

798 (7th Cir. 1999). In evaluating the judgment, we “con-

strue all facts in the light most favorable to the non-moving

party and draw all reasonable and justifiable inferences in

favor of that party.” Bellaver v. Quanex Corp., 200 F.3d 485,

491-92 (7th Cir. 2000). If the record shows “that there is no

genuine issue as to any material fact and that the moving

party is entitled to judgment as a matter of law,” summary

4

(...continued)

the United States. A local rule takes effect on the date

specified by the district court and remains in effect unless

amended by the court or abrogated by the judicial council of

the circuit. Copies of rules and amendments shall, upon their

promulgation, be furnished to the judicial council and the

Administrative Office of the United States Courts and be

made available to the public.

Fed. R. Civ. P. 83(a)(1) (emphasis added).

10 Nos. 01-3888 & 02-1152

judgment is appropriate. Fed. R. Civ. P. 56(c); see Celotex

Corp. v. Catrett, 477 U.S. 317, 322 (1986).

B. Copyrightability

The central issue in this case is whether the Mara manne-

quin is subject to copyright protection. This issue presents,

at bottom, a question of statutory interpretation. We there-

fore begin our analysis with the language of the statute.

Two provisions contained in 17 U.S.C. § 101 are at the center

of our inquiry. The first of these is the description of

pictorial, graphic and sculptural works:

“Pictorial, graphic, and sculptural works” include

two-dimensional and three-dimensional works of fine,

graphic, and applied art, photographs, prints and art

reproductions, maps, globes, charts, diagrams, models,

and technical drawings, including architectural plans.

Such works shall include works of artistic craftsmanship

insofar as their form but not their mechanical or utilitar-

ian 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.

The definition section further provides that “[a] ‘useful

article’ is 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.’ ” 17 U.S.C.

§ 101. As is clear from the definition of pictorial, graphic

and sculptural work, only “useful article[s],” as the term is

further defined, are subject to the limitation contained in the

Nos. 01-3888 & 02-1152 11

emphasized language above. If an article is not “useful” as

the term is defined in § 101, then it is a pictorial, graphic

and sculptural work entitled to copyright protection

(assuming the other requirements of the statute are met).

1. Usefulness

Pivot Point submits that the Mara mannequin is not a

“useful article” for purposes of § 101 because its “inherent

nature is to portray the appearance of runway models. Its

value,” continues Pivot Point, “resides in how well it por-

trays the appearance of runway models, just as the value of

a bust—depicting Cleopatra, for example, . . .—would be in

how well it approximates what one imagines the subject

looked like.” Appellant’s Br. at 19. Pivot Point relies upon

the decisions of the Fourth Circuit in Superior Form Builders

and of the Second Circuit in Hart for the proposition that

mannequins, albeit in those cases animal and fish manne-

quins, are not useful articles. Specifically, the Fourth Circuit

explained that

[a] mannequin provides the creative form and expres-

sion of the ultimate animal display. . . . Even though

covered with a skin, the mannequin is not invisible but

conspicuous in the final display. The angle of the ani-

mal’s head, the juxtaposition of its body parts, and the

shape of the body parts in the final display is little more

than the portrayal of the underlying mannequin.

Indeed, the mannequin can even portray the intensity of

flexed body parts, or it can reveal the grace of relaxed

ones. None of these expressive aspects of a mannequin

is lost by covering the mannequin with a skin. Thus, any

utilitarian aspect of the mannequin exists “merely to

portray the appearance” of the animal.

Superior Form Builders, 74 F.3d at 494; see also Hart, 86 F.3d at

323 (“The function of the fish form is to portray its own

12 Nos. 01-3888 & 02-1152

appearance, and that fact is enough to bring it within the

scope of the Copyright Act.”). Consequently, in Pivot

Point’s view, because the Mara mannequin performs func-

tions similar to those of animal and fish mannequins, it is

not a useful article and is therefore entitled to full copyright

protection.

Charlene presents us with a different view. It suggests

that, unlike the animal mannequins at issue in Superior Form

Builders and in Hart, the Mara mannequin does have a

useful function other than portraying an image of a high-

fashion runway model. According to Charlene, Mara also is

marketed and used for practicing the art of makeup ap-

plication. Charlene points to various places in the record

that establish that Mara is used for this purpose and is,

therefore, a useful article subject to the limiting language of

§ 101.

Pivot Point strongly disputes that the record establishes

such a use and argues that the district court’s reliance on

Charlene’s alleged proof improperly resolves an issue of fact

against the non-moving party in contravention of Federal

5

Rule of Civil Procedure 56. Indeed, our own review of the

5

The district court relied heavily on this fact in concluding that

Mara is a useful object:

Mara is a work of “applied art” and displays “artistic

craftsmanship”—Pivot Point commissioned a sculptor to

design a mannequin head that emulates features of runway

models—but serves utilitarian ends: Students in beauty

schools practice styling hair on Mara’s head and may

practice other skills by applying makeup to Mara’s eyes, lips,

and cheeks. The parties dispute which functions are primary.

Charlene Products says that Mara is used primarily for

practicing makeup; Pivot Point insists that its primary use is

(continued...)

Nos. 01-3888 & 02-1152 13

record leads us to believe that many of the documents cited

by Charlene are susceptible to more than one interpretation.

Nevertheless, we shall assume that the district court

correctly ruled that Mara is a useful article and proceed to

examine whether, despite that usefulness, it is amenable to

copyright protection.

2. Separability

We return to the statutory language. A useful article falls

within the definition of pictorial, graphic or sculptural

works “only if, and only to the extent that, such design incorpo-

rates pictorial, graphic, or sculptural features that can be identi-

fied separately from, and are capable of existing independently of,

5

(...continued)

hair styling. This factual dispute might have legal signifi-

cance if Pivot Point were contending that Mara’s sole use is

hair styling; then it is (barely) possible to imagine a suitable

mannequin head devoid of human features. (The legal

significance of this possibility is explicated below.) But Pivot

Point contends only that Mara’s “primary” use is hair

styling; it does not deny that a use (if only, in its view, a

secondary one) is the application of makeup and other

beauty-school arts, and the evidence would not permit a

reasonable jury to conclude that Mara has no utilitarian

value for makeup practice. (Pivot Point says that it “gener-

ally” sells Mara with painted-on makeup, which reveals by

negative implication that it also sells Mara without eye or

cheek coloring, so that beauty-school students can add their

own.)

R.401 at 2.

14 Nos. 01-3888 & 02-1152

6

the utilitarian aspects of the article.” 17 U.S.C. § 101. It is

common ground between the parties and, indeed, among

the courts that have examined the issue, that this language,

added by the 1976 Act, was intended to distinguish creative

works that enjoy protection from elements of industrial

design that do not. See H.R. Rep. No. 94-1476, at 55 (1976),

6

Prior to the addition of this language in the 1976 Act, Congress

had not explicitly authorized the Copyright Office to register

“useful articles.” Indeed, when Congress first extended copyright

protection to three-dimensional works of art in 1870, copyright

protection was limited to objects of fine art; objects of applied art

still were not protected. See Paul Goldstein, 1 Copyright § 2.5.3 at

2:58 (2d ed. 2004). This changed with the adoption of the Copy-

right Act of 1909 (“1909 Act”); Professor Goldstein explains:

The 1909 Act, which continued protection for three-dimen-

sional works of art, dropped the requirement that they

constitute fine art and thus opened the door to protection of

useful works of art. In 1948, the Copyright Office broadened

the scope of protection for three-dimensional works of art to

cover “works of artistic craftsmanship insofar as their form

but not their utilitarian aspects are concerned.” The United

States Supreme Court upheld this interpretation in Mazer v.

Stein, [347 U.S. 201, 213 (1954),] holding that the fact that

statuettes in issue were intended for use in articles of

manufacture—electric lamp bases—did not bar them from

copyright. Five years later, in 1959, the Copyright Office

promulgated a rule that if “the sole intrinsic function of an

article is its utility, the fact that the work is unique and

attractively shaped will not qualify it as a work of art.” The

regulation did, however, permit registration of features of a

utilitarian article that “can be identified separately and are

capable of existing independently as a work of art.”

Id. (quoting 37 C.F.R. § 207.8(a) (1949) and 37 C.F.R. § 202.10(c)

(1959); footnotes omitted).

Nos. 01-3888 & 02-1152 15

reprinted in 1976 U.S.C.C.A.N. 5659, 5668 (stating that the

purpose behind this language was “to draw as clear a line

as possible between copyrightable works of applied art and

uncopyrighted works of industrial design”). Although the

Congressional goal was evident, application of this lan-

guage has presented the courts with significant difficulty.

Indeed, one scholar has noted: “Of the many fine lines that

run through the Copyright Act, none is more troublesome

than the line between protectible pictorial, graphic and

sculptural works and unprotectible utilitarian elements of

industrial design.” Paul Goldstein, 1 Copyright § 2.5.3, at

2:56 (2d ed. 2004).

The difficulty in the application of this language would

not have come, in all likelihood, as a surprise to the Con-

gressional drafters. The language employed by Congress is

not the language of a bright-line rule of universal applica-

tion. Indeed, the circuits that have addressed the interpreta-

tive problem now before us uniformly have recognized that

the wording of the statute does not supply categorical

direction, but rather requires the Copyright Office and the

courts “to continue their efforts to distinguish applied art

and industrial design.” Robert C. Denicola, Applied Art &

Industrial Design: A Suggested Approach to Copyright in Useful

Articles, 67 Minn. L. Rev. 707, 730 (1983). In short, no doubt

well-aware of the myriad of factual scenarios to which its

policy guidance would have to be applied, Congress wisely

chose to provide only general policy guidance to be imple-

mented on a case-by-case basis through the Copyright

Office and the courts.

Even though the words of the statute do not yield a

definitive answer, we believe that the statutory language

nevertheless provides significant guidance in our task. We

therefore shall examine in more detail what that language

has to tell us, and we return to the necessary starting point

of our task, § 101.

16 Nos. 01-3888 & 02-1152

The statutory language provides that “the design of a

useful article . . . 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.” Al-

though the italicized clause contains two operative

phrases—“can be identified separately from” and “are capable of

existing independently of”—we believe, as have the other

7

courts that have grappled with this issue, that Congress, in

amending the statute, intended these two phrases to state a

single, integrated standard to determine when there is

sufficient separateness between the utilitarian and artistic

aspects of a work to justify copyright protection.

Certainly, one approach to determine whether material

can be “identified separately,” and the most obvious, is to

rely on the capacity of the artistic material to be severed

physically from the industrial design. See Mazer v. Stein, 347

U.S. 201 (1954) (holding that a statuette incorporated into

the base of a lamp is copyrightable). When a three-dimen-

sional article is the focus of the inquiry, reliance on physical

separability can no doubt be a helpful tool in ascertaining

whether the artistic material in question can be separated

from the industrial design. As Professor Denicola points

out, however, such an approach really is not of much use

when the item in question is two-dimensional. See Denicola,

supra, at 744. Indeed, because this provision, by its very

words, was intended to apply to two-dimensional material,

it is clear that a physical separability test cannot be the

exclusive test for determining copyrightability.

7

See infra note 8.

Nos. 01-3888 & 02-1152 17

It seems to be common ground between the parties and,

indeed, among the courts and commentators, that the pro-

tection of the copyright statute also can be secured when a

conceptual separability exists between the material sought

to be copyrighted and the utilitarian design in which that

8

material is incorporated. The difficulty lies not in the

8

Although the district court was skeptical that the statutory

language encompassed both physical and conceptual separabil-

ity, circuits have been almost unanimous in interpreting the

language of § 101 to include both types of separability. See

Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., Inc.,

74 F.3d 488, 494 (4th Cir. 1996) (asking whether functional aspects

of animal mannequins are “conceptually separable from the

works’ sculptural features”); Brandir Int’l, Inc. v. Cascade Pac.

Lumber Co., 834 F.2d 1142, 1144 (2d Cir. 1987) (stating that

“ ‘[c]onceptual separability’ is alive and well”); Carol Barnhart Inc.

v. Econ. Cover Corp., 773 F.2d 411, 418 (2d Cir. 1985) (judging

copyrightability of mannequin torsos based on whether “forms

possess aesthetic or artistic features that are physically or

conceptually separable from the forms’ use as utilitarian objects

to display clothes”); Norris Indus., Inc. v. Int’l Tel. & Tel. Corp., 696

F.2d 918, 923 (11th Cir. 1983) (“Both case law and legislative

history indicate that separability encompasses works of art that

are either physically severable from the utilitarian article or

conceptually severable.”); Kieselstein-Cord v. Accessories by Pearl,

Inc., 632 F.2d 989, 993 (2d Cir. 1980) (applying test of conceptual

separability).

Only one appellate court has rejected the idea of conceptual

separability. See Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C. Cir.

1978). In that case, arising under the 1909 Act, the Copyright

Office had refused to register a design for outdoor lighting

fixtures. The district court, however, believed the fixtures were

copyrightable and issued a writ of mandamus that the copyright

issue. However, the D.C. Circuit reversed. The precise question

(continued...)

18 Nos. 01-3888 & 02-1152

8

(...continued)

before the court was whether the regulation implementing the

1909 Act mandated that the Copyright Office register a copyright

for the lighting fixtures. The regulation at issue provided:

“(c) 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 art. However, if the shape of a utilitar-

ian 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.”

Id. at 800 (quoting 37 C.F.R. § 202.10(b) (1976)). The Copyright

Office took the position that the regulation barred “copyright

registration for the overall shape or configuration of a utilitarian

article, no matter how aesthetically pleasing that shape or

configuration may be.” Id. In determining whether to accept or

reject the proffered interpretation, the court noted that

“[c]onsiderable weight is to be given to an agency’s interpretation

of its regulations,” especially when “an administrative interpreta-

tion relates to a matter within the field of administrative exper-

tise.” Id. at 801. The court concluded that the Copyright Office

had adopted a “reasonable and well-supported interpretation of

§ 202.10(c).” Id. at 800. In the court’s view, the interpretation was

grounded in “the principle that industrial designs are not eligible

for copyright.” Id. The court also believed that the interpretation

found support in the legislative history of the newly enacted 1976

Act. The court acknowledged, however, that the legislative

history was not “free from ambiguity”; it explained:

Esquire could arguably draw some support from the state-

ment that a protectable element of a utilitarian article must

be separable “physically or conceptually” from the utilitarian

aspects of the design. But any possible ambiguity raised by

this isolated reference disappears when the excerpt is

considered in its entirety. The underscored passages indicate

(continued...)

Nos. 01-3888 & 02-1152 19

acceptance of that proposition, which the statutory language

clearly contemplates, but in its application. As noted by

Pivot Point, the following tests have been suggested for

determining when the artistic and utilitarian aspects of

useful articles are conceptually separable: 1) the artistic

features are “primary” and the utilitarian features “subsid-

iary,” Kieselstein-Cord, 632 F.2d at 993; 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

“stimulate[s] in the mind of the beholder a concept that is

separate from the concept evoked by its utilitarian func-

tion,” Carol Barnhart, 773 F.2d at 422 (Newman, J., dissent-

ing); 4) the artistic design was not significantly influenced

by functional considerations, see Brandir Int’l, 834 F.2d at

8

(...continued)

unequivocally that the overall design or configuration of a

utilitarian object, even if it is determined by aesthetic as well

as functional considerations, is not eligible for copyright.

Thus the legislative history, taken as congressional under-

standing of existing law, reinforces the Register’s position.

Id. at 803-04.

As is evident from the passages set forth above, the issue

addressed by the D.C. Circuit in Esquire arose in a much different

procedural and legal environment than the issue in the present

case. The court’s focus in Esquire was a regulation adopted

pursuant to the former law and its obligation to defer to the

agency’s interpretation of the law embodied in that regulation.

Furthermore, the court acknowledged that the 1976 Act was “not

applicable to the case before” it. Id. at 803. Given these differ-

ences, we do not believe that the D.C. Circuit would conclude

that its decision in Esquire disposed of the issue of conceptual

separability presently before this court.

20 Nos. 01-3888 & 02-1152

1145 (adopting the test forwarded in Denicola, supra, at 741);

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).

Pivot Point submits that “the test for conceptual separabil-

ity should reflect the focus of copyright law—the artistic,

not the marketability, design process, or usefulness.”

Appellant’s Br. at 26. According to Pivot Point, the central

inquiry is whether the article is a “ ‘work of art.’ ” Id. Pivot

Point further explains:

Conceptual separability would inhere in a “work of art”

integrated into a useful article, or a “work of art” put to

unexpected use, since the independent concepts of art

and utility coexist. Conceptual separability would not

exist in a useful article rendered simply aesthetically

pleasing, since the independent concept of art does not

exist, only the “artistic” embellishment to its utility, so

that such “artistic” features are actually utilitarian.

Should the “artistic” embellishment of utility reach the

level of a “work of art,” however, conceptual separabil-

ity may exist.

Id. at 26-27. This test, Pivot Point suggests, has the addi-

tional benefit of “satisf[ying] most, if not all, of the current

definitions of conceptual separability.” Id. at 27.

Charlene, by contrast, lauds the district court’s adoption

of Professor Goldstein’s test. “Under Goldstein’s test,”

Charlene asserts, “ ‘a pictorial, graphic or sculptural feature

incorporated in the design of a useful article is conceptually

separable if it can stand on its own as a work of art tradi-

tionally conceived, and if the useful article in which it is

Nos. 01-3888 & 02-1152 21

embodied would be equally useful without it.’ ” Appellees’

Br. at 26 (quoting R.401 at 5; emphasis added). Charlene

contends that this approach mirrors that adopted by the

majority in Carol Barnhart Inc. v. Economy Cover Corp., 773

F.2d 411 (2d Cir. 1985), “the most closely related precedent

to the case at bar.” Appellees’ Br. at 26.

Although both sides present thoughtful explanations for

their proposed tests, we perceive shortcomings in the par-

ties’ choices. With respect to Pivot Point’s focus on the arti-

cle as a “work of art,” it is certainly correct that Congress, in

enacting § 101, attempted to separate the artistic from the

utilitarian. However, this approach necessarily involves

judges in a qualitative evaluation of artistic endeavors—a

function for which judicial office is hardly a qualifier. With

respect to the Charlene’s approach, we believe that the test,

at least when applied alone, is tied too closely to physical

separability and, consequently, does not give a sufficiently

wide berth to Congress’ determination that artistic material

conceptually separate from the utilitarian design can satisfy

the statutory mandate.

In articulating a meaningful approach to conceptual se-

parability, we note that we are not the first court of appeals

to deal with this problem. The work of our colleagues in the

other circuits provides significant insights into our under-

standing of Congressional intent. Indeed, even when those

judges have disagreed on the appropriate application of the

Congressional mandate to the case before them, their insight

yield a bountiful harvest for those of us who now walk the

same interpretative path.

Among the circuits, the Court of Appeals for the Second

Circuit has had occasion to wrestle most comprehensively

with the notion of “conceptual separability.” Its case law

represents, we believe, an intellectual journey that has ex-

22 Nos. 01-3888 & 02-1152

plored the key aspects of the problem. We therefore turn to

a study of the key stages of doctrinal development in its

case law.

a.

The Second Circuit first grappled with the issue of

conceptual separability in Kieselstein-Cord v. Accessories by

Pearl, Inc., 632 F.2d 989 (2d Cir. 1980). In that case,

Kieselstein-Cord, a jewelry designer, had created a line of

decorative and jeweled belt buckles inspired by works of

art; he obtained copyright registrations for his designs.

When the line was successful, Accessories by Pearl, Inc.,

(“Pearl”) copied the designs and marketed its own, less-

expensive versions of the belt buckles. Kieselstein-Cord then

sued Pearl for copyright infringement; however,

Pearl claimed that the belt buckles were not copyrightable

because they were “ ‘useful articles’ with no ‘pictorial,

graphic, or sculptural features that can be identified sepa-

rately from, and are capable of existing independently of,

the utilitarian aspects’ of the buckles.” Id. at 991-92. The

Second Circuit disagreed. Although it did not articulate a

specific test for evaluating conceptual separability, it fo-

cused on the “primary” and “subsidiary” elements of the

article and concluded:

We see in appellant’s belt buckles conceptually separa-

ble sculptural elements, as apparently have the buckles’

wearers who have used them as ornamentation for parts

of the body other than the waist. The primary ornamen-

tal aspect of the Vaquero and Winchester buckles is

conceptually separable from their subsidiary utilitarian

function. This conclusion is not at variance with the

expressed congressional intent to distinguish

copyrightable applied art and uncopyrightable indus-

Nos. 01-3888 & 02-1152 23

trial design. Pieces of applied art, these buckles may be

considered jewelry, the form of which is subject to

copyright protection.

9

Id. at 993 (internal citations omitted).

b.

The Second Circuit revisited the issue of conceptual

separability in Carol Barnhart Inc. v. Economy Cover Corp., 773

F.2d 411 (2d Cir. 1985). In that case, Carol Barnhart, a

provider of retail display items, developed four mannequins

consisting of human torsos for the display of shirts and

jackets. It obtained copyright registrations for each of the

10

forms. When a competitor, Economy Cover, copied the

designs, Carol Barnhart claimed infringement of that

copyright. The Second Circuit held that the designs were not

copyrightable. It explained:

[W]hile copyright protection has increasingly been ex-

tended to cover articles having a utilitarian dimension,

Congress has explicitly refused copyright protection for

works of applied art or industrial design which have

aesthetic or artistic features that cannot be identified

separately from the useful article. Such works are not

copyrightable regardless of the fact that they may be

“aesthetically satisfying and valuable.”

9

Judge Weinstein (sitting by designation) dissented. See

Kieselstein-Cord, 632 F.2d at 993.

10

There were a total of four mannequins at issue, two male and

two female. Of those four, two of the mannequin forms were

unclothed, and two were formed with one layer of clothing and

were meant specifically for the display of outerwear.

24 Nos. 01-3888 & 02-1152

Applying these principles, we are persuaded that

since the aesthetic and artistic features of the Barnhart

forms are inseparable from the forms’ use as utilitarian

articles the forms are not copyrightable. . . . [Barnhart]

stresses that the forms have been responded to as

sculptural forms, and have been used for purposes

other than modeling clothes, e.g., as decorating props

and signs without any clothing or accessories. While

this may indicate that the forms are “aesthetically sa-

tisfying and valuable,” it is insufficient to show that the

forms possess aesthetic or artistic features that are

physically or conceptually separable from the forms’

use as utilitarian objects to display clothes. On the

contrary, to the extent the forms possess aesthetically

pleasing features, even when these features are consid-

ered in the aggregate, they cannot be conceptualized as

existing independently of their utilitarian function.

Id. at 418 (internal citations omitted). The court also rejected

the argument that Kieselstein-Cord was controlling. The

majority explained that what distinguished the Kieselstein-

Cord buckles from the Barnhart forms was “that the orna-

mented surfaces of the buckles were not in any respect

required by their functions; the artistic and aesthetic

features would thus be conceived as having been added to,

or superimposed upon, an otherwise utilitarian article.” Id.

at 419.

Perhaps the most theoretical and comprehensive discus-

sion of “conceptual separability,” as opposed to physical

separability, can be found in the dissenting opinion of Judge

Newman in Carol Barnhart, 773 F.2d at 419. After reviewing

the possible ways to determine conceptual separability,

Judge Newman set forth his choice and rationale:

Nos. 01-3888 & 02-1152 25

How, then, is “conceptual separateness” to be deter-

mined? In my view, the answer derives from the word

“conceptual.” For the design features to be “concep-

tually separate” from the utilitarian aspects of the useful

article that embodies the design, the article must stimu-

late in the mind of the beholder a concept that is sepa-

rate from the concept evoked by its utilitarian function.

The test turns on what may reasonably be understood

to be occurring in the mind of the beholder or, as some

might say, in the “mind’s eye” of the beholder. . . .

...

The “separateness” of the utilitarian and non-utilitar-

ian concepts engendered by an article’s design is itself

a perplexing concept. I think the requisite “separate-

ness” exists whenever the design creates in the mind of

the ordinary observer two different concepts that are

not inevitably entertained simultaneously. Again, the

example of the artistically designed chair displayed in

a museum may be helpful. The ordinary observer can be

expected to apprehend the design of a chair whenever

the object is viewed. He may, in addition, entertain the

concept of a work of art, but, if this second concept is

engendered in the observer’s mind simultaneously with

the concept of the article’s utilitarian function, the

requisite “separateness” does not exist. The test is not

whether the observer fails to recognize the object as a

chair but only whether the concept of the utilitarian

function can be displaced in the mind by some other

concept. That does not occur, at least for the ordinary

observer, when viewing even the most artistically

designed chair. It may occur, however, when viewing

some other object if the utilitarian function of the object

is not perceived at all; it may also occur, even when the

utilitarian function is perceived by observation, perhaps

26 Nos. 01-3888 & 02-1152

aided by explanation, if the concept of the utilitarian

function can be displaced in the observer’s mind while

he entertains the separate concept of some non-utilitar-

ian function. The separate concept will normally be that

of a work of art.

Id. at 422-23.

c.

The Second Circuit soon addressed conceptual separ-

ability again in Brandir International, Inc. v. Cascade Pacific

Lumber Co., 834 F.2d 1142 (2d Cir. 1987). That case involved

the work of an artist, David Levine; specifically, Levine had

created a sculpture of thick, interwoven wire. A cyclist

friend of Levine’s realized that the sculpture could, with

modification, function as a bicycle rack and thereafter put

Levine in touch with Brandir International, Inc. (“Brandir”).

The artist and the Brandir engineers then worked to modify

the sculpture to produce a workable and marketable bicycle

rack. Their work culminated in the “Ribbon Rack,” which

Brandir began marketing in 1979. Shortly thereafter, Cas-

cade Pacific Lumber Co. (“Cascade”) began selling a similar

product, and, in response, Brandir applied for copyright

protection and began placing copyright notices on its racks.

The Copyright Office, however, rejected the registration on

the ground that the rack did not contain any element that

was “capable of independent existence as a copyrightable

pictorial, graphic or sculptural work apart from the shape of

the useful article.” Id. at 1146.

The court first considered the possible tests for conceptual

separability in light of its past decisions and, notably,

attempted to reconcile its earlier attempts:

Nos. 01-3888 & 02-1152 27

Perhaps the differences between the majority and the

dissent in Carol Barnhart might have been resolved had

they had before them the Denicola article on Applied Art

and Industrial Design: A Suggested Approach to Copyright

in Useful Articles, [67 Minn. L. Rev. 707 (1983)]. . . .

Denicola argues that “the statutory directive requires a

distinction between works of industrial design and

works whose origins lie outside the design process,

despite the utilitarian environment in which they

appear.” He views the statutory limitation of

copyrightability as “an attempt to identify elements

whose form and appearance reflect the unconstrained

perspective of the artist,” such features not being the

product of industrial design. Id. at 742. “Copyright-

ability, therefore, should turn on the relationship be-

tween the proffered work and the process of industrial

design.” Id. at 741. He suggests that “the dominant

characteristic of industrial design is the influence of

nonaesthetic, utilitarian concerns” and hence concludes

that copyrightability “ultimately should depend on the

extent to which the work reflects artistic expression

uninhibited by functional considerations.” Id. To state

the Denicola test in the language of conceptual separa-

bility, if design elements reflect a merger of aesthetic

and functional considerations, the artistic aspects of a

work cannot be said to be conceptually separable from

the utilitarian elements. Conversely, where design ele-

ments can be identified as reflecting the designer’s

artistic judgment exercised independently of functional

influences, conceptual separability exists.

We believe that Professor Denicola’s approach pro-

vides the best test for conceptual separability and,

accordingly, adopt it here for several reasons. First, the

approach is consistent with the holdings of our previous

cases. In Kieselstein-Cord, for example, the artistic aspects

28 Nos. 01-3888 & 02-1152

of the belt buckles reflected purely aesthetic choices,

independent of the buckles’ function, while in Carol

Barnhart the distinctive features of the torsos—the

accurate anatomical design and the sculpted shirts and

collars—showed clearly the influence of functional con-

cerns. . . . Second, the test’s emphasis on the influence of

utilitarian concerns in the design process may help . . .

“alleviate the de facto discrimination against

nonrepresentational art that has regrettably accompa-

nied much of the current analysis.” Id. at 745.

Id. at 1145 (footnotes omitted).

Applying Professor Denicola’s test to the Ribbon Rack, the

court found that the rack was not copyrightable. The court

stated that, “[h]ad Brandir merely adopted one of the

existing sculptures as a bicycle rack, neither the application

to a utilitarian end nor commercialization of that use would

have caused the object to forfeit its copyrighted status.” Id.

at 1147. However, when the Ribbon Rack was compared to

earlier sculptures, continued the court, it was “in its final

form essentially a product of industrial design.” Id.

In creating the RIBBON Rack, the designer . . . clearly

adapted the original aesthetic elements to accommodate

and further a utilitarian purpose. These altered design

features of the RIBBON Rack, including the

spacesaving, open design achieved by widening the

upper loops . . ., the straightened vertical elements that

allow in- and above-ground installation of the rack, the

ability to fit all types of bicycles and mopeds, and the

heavy-gauged tubular construction of rustproof gal-

vanized steel, are all features that combine to make for

a safe, secure, and maintenance-free system of parking

bicycles and mopeds.

...

Nos. 01-3888 & 02-1152 29

. . . While the RIBBON Rack may be worthy of admi-

ration for its aesthetic qualities alone, it remains none-

theless the product of industrial design. Form and

function are inextricably intertwined in the rack, its

ultimate design being as much the result of utilitarian

pressures as aesthetic choices . . . . Thus there remains

no artistic element of the RIBBON Rack that can be

identified as separate and “capable of existing inde-

pendently, of, the utilitarian aspects of the article.”

Id. at 1146-47.

d.

We believe that the experience of the Second Circuit is

also reflected in the more recent encounter of the Fourth

Circuit with the same problem. In Superior Form Builders,

Inc. v. Dan Chase Taxidermy Supply Co., Inc., 74 F.3d 488 (4th

Cir. 1996), the court considered whether animal mannequins

qualified for copyright protection. The Fourth Circuit first

considered whether the mannequins were useful articles as

defined by § 101 and concluded that they were not:

A mannequin provides the creative form and expres-

sion of the ultimate animal display. . . . Even though

covered with a skin, the mannequin is not invisible

but conspicuous in the final display. The angle of the

animal’s head, the juxtaposition of its body parts, and

the shape of the body parts in the final display is little

more than the portrayal of the underlying manne-

quin. . . . None of these expressive aspects of a manne-

quin is lost by covering the mannequin with a skin.

Thus, any utilitarian aspect of the mannequin exists

“merely to portray the appearance” of the animal. See 17

U.S.C. § 101.

30 Nos. 01-3888 & 02-1152

. . . It is the portrayal of the animal’s body expression

given by the mannequin that is thus protectable under

the Copyright Act. We therefore agree with the district

court in this case because “the usefulness of the forms is

their portrayal of the appearance of animals.” The

mannequin forms “by definition are not useful articles.”

Id. at 494 (quoting Superior Form Builders v. Dan Chase

Taxidermy Supply Co., Inc., 851 F.Supp. 222, 223 (E.D. Va.

1994)).

The court, however, also considered whether, if useful, the

utilitarian and aesthetic aspects of the mannequin were

separable:

To the extent that an argument can be made that the

mannequins in this case perform a utilitarian func-

tion—other than portraying themselves—by supporting

the mounted skins, we believe the function to be con-

ceptually separable from the works’ sculptural features.

See Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d

1142, 1145 (2d Cir. 1987) (“Where design elements can

be identified as reflecting the designer’s artistic judg-

ment exercised independently of functional influences,

conceptual separability exists.”); Kieselstein-Cord v.

Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980)

(finding sculptural element of belt buckle conceptually

separable from utilitarian function).

Id. Thus, without specifically adopting one of the tests of

conceptual separability, the Fourth Circuit determined that

artistic work put into the design of the animal frame was

copyrightable; the fact that a skin was placed on the model

Nos. 01-3888 & 02-1152 31

and that the model, therefore, was useful in the display of

11

the skin did not negate the artistic elements of the design.

11

Notably, in Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320

(2d Cir. 1996), the Second Circuit shortly thereafter addressed the

question whether a fish mannequin was copyrightable. Although

the court did not address specifically the issue before us today, its

analysis is nevertheless helpful. Referring to its decision in Carol

Barnhart, the Second Circuit posed the question rather simplisti-

cally: “Is taxidermy different [for purposes of copyright protec-

tion]?” Id. at 321. The Second Circuit resolved that it is:

We do not agree that Barnhart mandates a finding that fish

mannequins are “useful articles” undeserving of copyright

protection. . . . [W]e do not believe that the Barnhart torsos

can be analogized to the fish in this case. In Barnhart, the

headless, armless, backless styrene torsos were little more

than glorified coat-racks used to display clothing in stores.

The torsos were designed to present the clothing, not their

own forms. In taxidermy, by contrast, people look for more

than a fish skin; they wish to see a complete “fish.” The

superficial characteristics of the fish, such as its color and

texture, are admittedly conveyed by the skin, but the shape,

volume, and movement of the animal are depicted by the

underlying mannequin. Whether the fish is shown as resting,

jumping, wiggling its tail, or preparing to munch on some

plankton, is dictated by the mannequin and by its particular

form, not by the skin.

In short, the fish mannequin is designed to be looked at.

That the fish mannequin is meant to be viewed clothed by a

fish skin, rather than naked and on its own, makes no

difference. The function of the fish form is to portray its own

appearance, and that fact is enough to bring it within the

scope of the Copyright Act. 17 U.S.C. § 101; accord Superior

Form Builders v. Dan Chase Taxidermy Supply Co., 74 F.3d 488

(4th Cir. 1996) (distinguishing Barnhart and holding that

(continued...)

32 Nos. 01-3888 & 02-1152

e.

There is one final Second Circuit case that bears comment.

In Mattel, Inc. v. Goldberger Doll Manufacturing Co., 365 F.3d

133 (2d Cir. 2004), the Second Circuit rejected the idea that

a particular expression of features on a doll’s face was not

subject to copyright protection. The case arose out of the

alleged copying of the facial features of Mattel’s Barbie dolls

by Goldberger Doll Manufacturing when creating its

“Rockettes 2000” doll. On Goldberger’s motion for sum-

mary judgment, the district court held that “copyright

protection did not extend to Barbie’s eyes, nose, and mouth .

. . .” Id. at 134. The Second Circuit reversed. Although it did

not speak specifically in terms of conceptual separability,

the court’s reasoning is nevertheless instructive; it stated:

The proposition that standard or common features are

not protected is inconsistent with copyright law. To

merit protection from copying, a work need not be

particularly novel or unusual. It need only have been

“independently created” by the author and possess

“some minimal degree of creativity.” Feist Publ’ns, Inc.

11

(...continued)

mammal taxidermy mannequins are “sculptural works”

rather than “useful articles” because their utilitarian aspects

serve “merely to portray the appearance” of the animal). . . .

We conclude that fish mannequins even if considered

“useful articles,” are useful insofar as they “portray the[ir]

appearance.” 17 U.S.C. § 101. That makes them

copyrightable.

Id. at 323 (internal citation omitted). Thus, the Second Circuit

distinguished fish mannequins from human mannequins;

however, it did so on the basis that the fish mannequins were not

“useful articles” as that term is defined in § 101, not on the basis

that, although useful, the artistic aspects were physically or

conceptually separable from the useful aspects of the article.

Nos. 01-3888 & 02-1152 33

v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). . . . There

are innumerable ways of making upturned noses, bow

lips, and widely spaced eyes. Even if the record had

shown that many dolls possess upturned noses, bow

lips, and wide-spread eyes, it would not follow that

each such doll—assuming it was independently created

and not copied from others—would not enjoy pro-

tection from copying.

Id. at 135 (footnotes and parallel citations omitted). Addi-

tionally, the court noted the scope of the copyright protec-

tion that the Barbie dolls enjoyed:

The copyright does not protect ideas; it protects only the

author’s particularized expression of the idea. Thus,

Mattel’s copyright in a doll visage with an upturned

nose, bow lips, and widely spaced eyes will not prevent

a competitor from making dolls with upturned noses,

bow lips, and widely spaced eyes, even if the competi-

tor has taken the idea from Mattel’s example, so long as

the competitor has not copied Mattel’s particularized

expression. An upturned nose, bow lips, and wide eyes

are the “idea” of a certain type of doll face. That idea

belongs not to Mattel but to the public domain. But

Mattel’s copyright will protect its own particularized

expression of that idea and bar a competitor from

copying Mattel’s realization of the Barbie features.

Id. at 136 (citations omitted).

C. Application

Each of these cases differs in the object at issue and the

method by which the court evaluated whether the object

was entitled to copyright protection. Yet, each court at-

34 Nos. 01-3888 & 02-1152

tempted to give effect to “the expressed congressional intent

to distinguish copyrightable applied art and uncopy-

rightable industrial design.” Kieselstein-Cord, 632 F.2d at 993;

see also Carol Barnhart, 773 F.2d at 417-18 (reviewing legisla-

tive history in detail and concluding that, although “copy-

right protection has increasingly been extended to cover

articles having a utilitarian dimension,” Congress did not

intend all useful articles that are “aesthetically satisfying or

valuable” to be copyrightable); Brandir Int’l, 834 F.2d at 1145

(adopting Professor Denicola’s test that makes

copyrightability dependent upon “the extent to which the

work reflects artistic expression uninhibited by functional

considerations” (internal quotation marks and citations

omitted)); Superior Form Builders, 74 F.3d at 494 (distinguish-

ing the animal mannequins at issue from “aesthetically

pleasing articles of industrial design”).

The Second Circuit cases exhibit a progressive attempt to

forge a workable judicial approach capable of giving mean-

ing to the basic Congressional policy decision to distinguish

applied art from uncopyrightable industrial art or design. In

Kieselstein-Cord, the Second Circuit attempted to distinguish

artistic expression from industrial design by focusing on the

present use of the item, i.e., the “primary ornamental

aspect” versus the “subsidiary utilitarian function” of the

object at issue. 632 F.2d at 993. In Carol Barnhart, the Second

Circuit moved closer to a process-oriented approach:

What distinguishes those [Kieselstein-Cord] buckles

from the Barnhart forms is that the ornamented surfaces

of the buckles were not in any respect required by their

utilitarian functions; the artistic and aesthetic features

could thus be conceived of as having been added to, or

superimposed upon, an otherwise utilitarian article. The

unique artistic design was wholly unnecessary to

performance of the utilitarian function. In the case of the

Nos. 01-3888 & 02-1152 35

Barnhart forms, on the other hand, the features claimed

to be aesthetic or artistic, e.g., the life-size configuration

of the breasts and the width of the shoulders, are

inextricably intertwined with the utilitarian feature, the

display of clothes. Whereas a model of a human torso,

in order to serve its utilitarian function, must have some

configuration of the chest and some width of shoulders,

a belt buckle can serve its function satisfactorily without

any ornamentation of the type that renders the

Kieselstein-Cord buckles distinctive.

773 F.2d at 419. Thus, it was the fact that the creator of the

torsos was driven by utilitarian concerns, such as how dis-

play clothes would fit on the end product, that deprived the

human torsos of copyright protection.

This process-oriented approach for conceptual separabil-

ity—focusing on the process of creating the object to deter-

mine whether it is entitled to copyright protection—is more

fully articulated in Brandir and indeed reconciles the earlier

case law pertaining to conceptual separability.

[T]he approach is consistent with the holdings of our

previous cases. In Kieselstein-Cord, for example, the

artistic aspects of the belt buckles reflected purely aes-

thetic choices, independent of the buckles’ function,

while in Carol Barnhart the distinctive features of the

torsos—the accurate anatomical design and the sculpted

shirts and collars—showed clearly the influence of

functional concerns. Though the torsos bore artistic

features, it was evident the designer incorporated those

features to further the usefulness of the torsos as man-

nequins.

Brandir, 834 F.2d at 1145.

36 Nos. 01-3888 & 02-1152

Furthermore, Brandir is not inconsistent with the more

theoretical rendition of Judge Newman in his Carol Barnhart

dissent—that “the requisite ‘separateness’ exists whenever

the design creates in the mind of an ordinary observer two

different concepts that are not inevitably entertained

simultaneously.” 773 F.2d at 422. When a product has

reached its final form as a result of predominantly func-

tional or utilitarian considerations, it necessarily will be

more difficult for the observer to entertain simultaneously

two different concepts—the artistic object and the utilitarian

object. In such circumstances, Brandir has the added benefit

of providing a more workable judicial methodology by

articulating the driving principle behind conceptual

separability—the influence of industrial design. When the

ultimate form of the object in question is “as much the result

of utilitarian pressures as aesthetic choices,” “[f]orm and

function are inextricably intertwined,” and the artistic

aspects of the object cannot be separated from its utilitarian

aspects for purposes of copyright protection. Brandir, 834

F.2d at 1147.

Conceptual separability exists, therefore, when the artistic

aspects of an article can be “conceptualized as existing

independently of their utilitarian function.” Carol Barnhart,

773 F.2d at 418. This independence is necessarily informed

by “whether the design elements can be identified as re-

flecting the designer’s artistic judgment exercised independ-

ently of functional influences.” Brandir, 834 F.3d at 1145. 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 pressures as aesthetic choices,” id. at 1147, the

useful and aesthetic elements are not conceptually separa-

ble.

Nos. 01-3888 & 02-1152 37

Applying this test to the Mara mannequin, we must

conclude that the Mara face is subject to copyright protec-

tion. It certainly is not difficult to conceptualize a human

face, independent of all of Mara’s specific facial features,

i.e., the shape of the eye, the upturned nose, the angular

cheek and jaw structure, that would serve the utilitarian

functions of a hair stand and, if proven, of a makeup model.

Indeed, one is not only able to conceive of a different face

than that portrayed on the Mara mannequin, but one easily

can conceive of another visage that portrays the “hungry

look” on a high-fashion runway model. Just as Mattel is

entitled to protection for “its own particularized expression”

of an “upturned nose[], bow lips, and widely spaced eyes,”

Mattel, 365 F.3d at 136, so too is Heerlein (and, therefore,

Pivot Point as assignee of the copyright registration) entitled

to have his expression of the “hungry look” protected from

copying.

Mara can be conceptualized as existing independent from

its use in hair display or make-up training because it is the

product of Heerlein’s artistic judgment. When Passage

approached Heerlein about creating the Mara sculpture,

Passage did not provide Heerlein with specific dimensions

or measurements; indeed, there is no evidence that

Heerlein’s artistic judgment was constrained by functional

considerations. Passage did not require, for instance, that

the sculpture’s eyes be a certain width to accommodate

standard-sized eyelashes, that the brow be arched at a

certain angle to facilitate easy make-up application or that

the sculpture as a whole not exceed certain dimensional

limits so as to fit within Pivot Point’s existing packaging

system. Such considerations, had they been present, would

weigh against a determination that Mara was purely the

product of an artistic effort. By contrast, after Passage met

with Heerlein to discuss Passage’s idea for a “hungry-look”

model, Heerlein had carte blanche to implement that vision

38 Nos. 01-3888 & 02-1152

as he saw fit. Consequently, this is not a situation, such as

was presented to the Second Circuit in Carol Barnhart, in

which certain features (“accurate anatomical design and the

sculpted shirts and collars”) were included in the design for

purely functional reasons. Brandir, 834 F.2d at 1145. Further-

more, unlike “the headless, armless, backless styrene torsos”

which “were little more than glorified coat-racks used to

display clothing in stores,” Hart, 86 F.3d at 323, the creative

aspects of the Mara sculpture were meant to be seen and

admired. Thus, because Mara was the product of a creative

process unfettered by functional concerns, its sculptural

features “can be identified separately from, and are capable

of existing independently of,” its utilitarian aspects. It

therefore meets the requirements for conceptual separability

and is subject to copyright protection.

Conclusion

The Mara mannequin is subject to copyright protection.

We therefore must reverse the summary judgment in favor

of Charlene Products and Mr. Yau; the case is remanded for

a trial on Pivot Point’s infringement claim. Furthermore,

because Charlene Products and Mr. Yau have not prevailed

on the merits at this point, the judgment of the district court

with respect to attorneys’ fees must be vacated. The cross-

appeal with respect to attorneys’ fees is moot. Pivot Point

may recover its costs in this court.

REVERSED AND REMANDED; CROSS-APPEAL DISMISSED

Nos. 01-3888 & 02-1152 39

KANNE, Circuit Judge, dissenting. Writing for the majority,

Judge Ripple has applied his usual thorough and scholarly

approach to this difficult intellectual property problem;

however, I cannot join the majority opinion because I am

not persuaded that the “Mara” mannequin is copyrightable.

All functional items have aesthetic qualities. If copyright

provided protection for functional items simply because of

their aesthetic qualities, Congress’s policy choice that gives

less protection in patent than copyright would be under-

mined. See American Dental Ass’n v. Delta Dental Plans Ass’n,

126 F.3d 977, 980 (7th Cir. 1997).

The majority rightly assumes that Mara is a “useful ar-

ticle” as defined in 17 U.S.C. § 101. Opinion at 13. To receive

copyright protection as a “sculptural work,” then, Mara

must come within the narrow restrictions placed on “useful

articles” in the definition of pictorial, graphic, and sculp-

tural works:

[T]he design of a useful article . . . shall be considered a

. . . sculptural work only if, and only to the extent that,

such design incorporates . . . sculptural features that can

be identified separately from, and are capable of existing

independently of, the utilitarian aspects of the article.

17 U.S.C. § 101 (emphasis added). As the district court

noted, the statute requires, on its face, that sculptural fea-

tures must be separately identified from the utilitarian

aspects of the article (“conceptual separability”) and they

must exist independently from the utilitarian aspects of the

article (“physical separability”) in order to receive copyright

protection. As to whether both conceptual and physical

separability are required for copyrightability, most courts

and commentators have concluded that only one or the

other test is appropriate. But that issue is not presented here

because Mara is not copyrightable regardless of whether

both or either is applied.

40 Nos. 01-3888 & 02-1152

Taking physical separability first, the district court used

examples from case law to illustrate that the sculptural

features in many useful items can be physically removed

from the object and sold separately without affecting the

functionality of the useful article. See, e.g., Mazer v. Stein, 347

U.S. 201 (1954) (holding that a sculpture of a dancer carved

into the base of a lamp may be copyrighted); Kieselstein-Cord

v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980)

(holding that decorative belt buckles could be copyrighted

as separate objects sold not to hold up one’s pants).

Mara, on the other hand, has only functional attributes.

Thus, any physical separation of a portion of her would not

be independent of her utilitarian aspects. She is sold to

beauty schools as a teaching device; students style her hair

and apply makeup as realistic training for such pursuits on

live subjects. A mannequin head without a neck, or with

different eyes and musculature, would not serve the utili-

tarian purpose of applying makeup or teaching the art of

matching hair styles to facial features. As the district court

explained: “Beauty students style hair to flatter the face, not

to be worn on featureless ovoids. The use of a mannequin

head in training students of beauty schools lies in its aesthetic

qualities.” There is nothing in Mara that we could physically

remove that would not be part of Mara’s utility as a teach-

ing aid. Like mannequins of human torsos, Carol Barnhart

Inc. v. Economy Cover Corp., 773 F.2d 411, 418-19 (2d Cir.

1985), mannequins of human faces are not physically

separable from their functional purpose and are therefore

not copyrightable.

Next, the district court considered various restatements of

the meaning of “conceptual separability” (whether features

can be identified or conceived of separately from the

utilitarian aspects) and applied the most appropriate one to

Mara. Professor Goldstein, in his treatise, Copyright: Princi-

Nos. 01-3888 & 02-1152 41

ples, Law & Practice, presents a reasonable explanation of the

statutory text: “a . . . sculptural feature incorporated in the

design of a useful article is conceptually separable if it can

stand on its own as a work of art traditionally conceived,

and if the useful article in which it is embodied would be

equally useful without it.” Mara has no conceptually

separable features to which copyright protection could be

granted. Her features are incapable of being identified

separately from the utilitarian use of those features. Without

features, the mannequin’s head and neck would be little

more than an egg on a stick, useless for its intended pur-

pose. Mara possesses neither physical nor conceptual

separability.

The majority, concluding that Congress intended “to state

a single, integrated standard,” deduced that the standard

must be “conceptual separability.” This may be correct, as

it is very difficult to divine the distinction between physical

and conceptual separability if those standards are properly

stated. In my view, however, the majority’s explanation of

conceptual separability lacks a basis in the statute. As the

majority sees it, conceptual separability “exists . . . when the

artistic aspects of an article can be conceptualized as

existing independently of their utilitarian function.” Opin-

ion at 36. The majority further explains that the way to

determine if this is the case is to look to the process of

design: if independent “artistic” choices were made in the

sculpture’s creation, and such choices were not later sullied

by the influence of industrial design, then some of the useful

article is a conceptually separable sculpture and therefore

copyrightable. Opinion at 36-37.

Problematically, the majority’s test for conceptual separ-

ability seems to bear little resemblance to the statute. The

statute asks two questions: Does the useful article incorpo-

rate “sculptural features that can be identified separately

42 Nos. 01-3888 & 02-1152

from the utilitarian aspects” of the article? And are these

features “capable of existing independently” from the utili-

tarian aspects? The copyright statute is concerned with

protecting only non-utilitarian features of the useful article.

To be copyrightable, the statute requires that the useful

article’s functionality remain intact once the copyrightable

material is separated. In other words, Pivot Point needs to

show that Mara’s face is not a utilitarian “aspect” of the

product “Mara,” but rather a separate non-utilitarian “fea-

ture.” The majority, by looking only to whether the features

could also “be conceptualized as existing independently of

their utilitarian function” and ignoring the more important

question of whether the features themselves are utilitarian

aspects of the useful article, mistakenly presupposes that

utilitarian aspects of a useful article can be copyrighted. If

we took away Mara’s facial features, her functionality

would be greatly diminished or eliminated, thus proving

that her features cannot be copyrighted.

Moreover, the “process-oriented approach,” advocated by

the majority drifts even further away from the statute.

Opinion at 35. The statute looks to the useful article as

it exists, not to how it was created. I believe it simply is

irrelevant to inquire into the origins of Mara’s eyes, cheek-

bones, and neck. If such features have been fully incorpo-

rated as functional aspects of the mannequin, then copyright

does not provide protection. Even if we were to look at the

“process” that led to the creation of Mara, it is undeniable

that, from the beginning, Pivot Point intended Mara to serve

a functional purpose and commissioned her creation to

fulfill that purpose (not to create a work of art for aesthetic

beauty).

The majority, as evidenced by its emphasis on the fact that

Charlene Products apparently copied Mara with its doll,

“Liza,” seems unduly concerned in this context with

Nos. 01-3888 & 02-1152 43

Charlene’s questionable business practices. This is immate-

rial to the determination of whether the Mara doll is pro-

tected by copyright law. Importantly, other possible legal

protections for Pivot Point’s intellectual property—design

patent, trademark, trade dress, and state unfair competition

law—are available to address the majority’s concerns.

Copyright does not protect functional products. Charlene is

free, under its own brand name, to copy and sell copies of

useful articles that do not have patent protection. See, e.g.,

TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23

(2001); Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.

141 (1989); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225

(1964). I fear that the majority’s opinion grants copyright

protection to functional aspects of a useful article. I would,

therefore, affirm the district court’s grant of summary

judgment in favor of Charlene Products and Mr. Yau.

A true Copy:

Teste:

_____________________________

Clerk of the United States Court of

Appeals for the Seventh Circuit

USCA-02-C-0072—6-25-04