Esquire, Inc. v. Barbara A. Ringer

LEVENTHAL, Circuit Judge,

concurring:

I concur in the judgment of reversal. I also concur in Judge Bazelon’s opinion which I understand to hold that the provision of the Copyright Act limiting design copyright protection to “works of art,” 17 U.S.C. § 5 (g) (1976), authorizes the issuance *807 of the pertinent Copyright Office regulations, 37 C.F.R. § 202.10 (c) (1977), and that both statute and regulations may be interpreted to preclude registration (a) of the design of a useful article, however aesthetically valuable, and (b) of any elements of the design unless they can be identified separately from the utilitarian aspects of the design. Esquire contends that the restrictive passage of section 202.10(c), which refers to situations where “the sole intrinsic function of an article is its utility,” must be read narrowly, so as to make the prohibition on registration inapplicable where an article possesses from the outset not only utility but an aesthetically original and pleasing design form. I join in the rejection of that contention. Form follows function, in the credo of one school of art. Yet the overall legislative policy against monopoly for industrial design sustains the Copyright Office in its effort to distinguish between the instances where the aesthetic element is conceptually severable and the instances where the aesthetic element is inextricably interwoven with the utilitarian aspect of the article.

I add a word to note that Judge Bazelon’s opinion reflects the court’s premise that the district court had jurisdiction of this action even though Esquire requested issuance of a writ of mandamus to the Register of Copyrights.

The courts have issued mandatory instructions to federal officials notwithstanding the wording of Federal Rule of Civil Procedure 81(b), which by its terms abolishes the writ of mandamus in the federal district courts. 1 The rule permits equivalent relief, and the courts have issued orders that “for brevity, we may still speak of as . ‘mandamus.’ ” 2

The Mandamus and Venue Act of 1962, 28 U.S.C. § 1361 (1970), authorizes district courts generally to issue writs of mandamus to federal officials and “to issue appropriate corrective orders where Federal officials are not acting within the zone of their permissible discretion but are abusing their discretion or otherwise acting contrary to law.” 3 Although 28 U.S.C § 1361 applies only in case of a “duty owed to plaintiff,” it is not bounded by the hoary strictures of old mandamus law.

Apart from an action in mandamus, which may retain residual rigidity, there is jurisdiction to provide declaratory relief under the 1976 amendment to 28 U.S.C. § 1331 . That eliminated the jurisdictional amount requirement for any federal question in an “action brought against the United States, any agency thereof, or any officer or employee thereof in his official capacity.” Now section 1331 broadly confers jurisdiction on federal courts to review agency action “subject only to preclusion-of-review statutes created or retained by Congress.” Califano v. Sanders, 430 U.S. 99, 105 , 97 S.Ct. 980, 984 , 51 L.Ed.2d 192 (1977). Regulations implementing federal statutes have the “force and effect of law” 4 *808 and cases arising under them are cases arising “under . laws ... of the United States.” 28 U.S.C. § 1331 (a) (1970). 5

As Judge Bazelon’s opinion notes (fn. 28) the 1976 revision of the Copyright Act permits a copyright claimant to bring an infringement action even though the copyright has not been registered. 17 U.S.C. § 411 (1976). That statutory provision permits review of the Register’s negative decision, and gives the Register an option to intervene. But the Copyright Act requires an infringement, and the claimant may wish to seek prior relief, i. e., to obtain the copyright registration, precisely in order to avoid the infringement and its disastrous business consequences. 6

As for litigation involving details of application of a regulation, the Register of Copyrights has broad discretion. In this case, as Judge Bazelon points out, the application of the regulation to the facts involved the exercise of administrative discretion, and the denial of registration in the circumstances did not amount to an abuse of discretion. The subject-matter of copyrights is such as to suggest that rarely if ever will a ruling denying an application for copyright on the basis of the application of a regulation be considered a contravention of a duty owed to the applicant. There is jurisdiction but no large likelihood of successful invocation.

. See K. Davis, Administrative Law Treatise § 23.10 (1958).

. Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 260 F.2d 637, 640 (2d Cir. 1958) (L. Hand, J.).

. People v. United States Dept. of Agriculture, 138 U.S.App.D.C. 291 , 295, 427 F.2d 561, 565 (1970); Haneke v. Secretary of HEW, 175 U.S.App.D.C. 329, 333-34 , 535 F.2d 1291, 1295-96 (1976). Prior to 1962 the District Court of the District of Columbia was the only federal court that had authority, by virtue of its general equity jurisdiction, to issue a writ against a federal official. See Kendall v. United States, 37 U.S. (12 Pet.) 524 , 9 L.Ed. 1181 (1838); McIntire v. Wood, 11 U.S. (7 Cranch) 504 , 3 L.Ed. 420 (1813). See generally Byse & Fiocca, Section 1361 of the Mandamus and Venue Act of 1962 and "Nonstatutory” Judicial Review of Federal Administrative Action, 81 Harv.L.Rev. 308, 310-13 (1967).

. Batterton v. Francis, 432 U.S. 416 , 425 n.9, 97 S.Ct. 2399 , 53 L.Ed.2d 448 (1977); Foti v. Immigration and Naturalization Serv., 375 U.S. 217, 222 , 84 S.Ct. 306 , 11 L.Ed.2d 281 (1963); see Service v. Dulles, 354 U.S. 363 , 77 S.Ct. 1152 , 1 L.Ed.2d 1403 (1957).

As to the “force of law” given to administrative regulations, a striking instance is Paul v. United States, 371 U.S. 245 , 83 S.Ct. 426 , 9 L.Ed.2d 292 (1963), holding that Armed Services Procurement Regulation requiring competitive bidding has “the force of law” and overrides California’s minimum price regulation of milk insofar as it purported to regulate sales of milk to military installations. Thus regulations *808 were federal law for purposes of the Supremacy Clause. In 1963 the Court of Claims held that although the standard termination-for-convenience clause had been omitted from a contract, it would be deemed part of the procurement agreement since its inclusion was required by regulation, which had the “force of law.” G. L. Christian and Associates v. United States, 312 F.2d 418 , 160 Ct.Cl. 1 , cert. denied, 375 U.S. 954 , 84 S.Ct. 444 , 11 L.Ed.2d 314 (1963). See generally Leventhal, Public Contracts and Administrative Law, 52 A.B.A.J. 35 (1966).

The foregoing does not preclude an attack, for reasons of procedure or substance, on the regulations or any provision of the regulations.

. Compare Judge Friendly’s opinion in Empresa Hondurena De Vapores v. McLeod, 300 F.2d 222 (2d Cir. 1962), vacated on other grounds sub nom. McCulloch v. Sociedad Nacional de Marineros de Honduras, 372 U.S. 10 , 83 S.Ct. 671 , 9 L.Ed.2d 547 (1963). That case involved an attempt by a Honduran corporation to enjoin a Regional Director of the NLRB from conducting a representation election on a Honduran registered vessel. In holding that the controversy was one “arising under” federal law, Judge Friendly observed:

it would run counter both to the language and to the policy underlying [ 28 U.S.C. § 1337 ] to hold that the jurisdictional grant did not include an action whose sole purpose is to challenge an order of a Federal agency sought to be justified by a Federal statute.

300 F.2d at 226-27 .

. Whether the Copyright Act remedy is exclusive in the event of infringement is a separate question.