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PIVOT POINT INTERNATIONAL v. CHARLENE PRODUCTS

October 2, 2001

PIVOT POINT INTERNATIONAL, INC.
v.
CHARLENE PRODUCTS, INC., ET AL.



The opinion of the court was delivered by: Frank H. Easterbrook, Circuit Judge.[fn†] [fn†] Frank H. Easterbrook, Circuit Judge Of the Seventh Circuit, sitting by designation.

Opinion

Long delay rarely makes for better adjudication. This suit is 11 years old, and I am the fifth judge assigned to it. Prior judges have disagreed among themselves about important issues, and in what follows I continue that practice by disagreeing with one earlier decision (in the process restoring a decision that had been set aside). Moreover, my own work has not been exactly expeditious, and I apologize to the parties (and their lawyers) for dawdling in resolving this case after inviting additional motions for summary judgment. This opinion at last resolves the many issues now on the table and ends the litigation in this court.

1. The principal dispute is whether a human mannequin head is copyrightable subject matter. If it is, then there must be a trial on the question whether Liza is a knockoff of Mara. Each side seeks summary judgment on the question whether Mara is copyrightable. (Charlene Products also contends that the record does not support a conclusion that it copied from Mara. Judge Nordberg concluded otherwise earlier in the case, see 1994 U.S. Dist. LEXIS 8993 at *12 (N.D. Ill. June 29, 1994), and I agree with him — though not to the extent of thinking that the evidence in Pivot Point's favor is bound to persuade any reasonable jury. Copying is a bona fide dispute, though it turns out not to be legally material.)

Pivot Point contends that, because of Judge Nordberg's decisions, principally the opinion reported at 816 F. Supp. 1286 (N.D. Ill. 1993), the law of the case requires a denial of Charlene Products' motion. Yet Judge Nordberg's opinion disagreed with a still-earlier decision by Judge Parsons, to whom this case was initially assigned. See 1992 U.S. Dist. LEXIS 13752 (N.D. Ill. Sept. 11, 1992) (granting summary judgment to Charlene Products on the copyright issue). If it was proper for Judge Nordberg to set aside Judge Parsons's decision in defendants' favor, it is no less proper for me to inquire whether a material issue of disputed fact requires a trial. Identifying the rules of law that make a particular factual dispute legally "material" is essential to the process of trial planning; otherwise the proceedings deteriorate. It was my work on the motions in limine, which were to shape the issues and evidence for trial, that led me to wonder whether the controlling issues were not legal rather than factual in nature. Having given the subject additional thought, I now conclude that the principal dispute concerns the meaning of the Copyright Act, the sort of controversy that must be resolved in advance of trial.

Section 102(a)(5) of the Copyright Act, 17 U.S.C. § 102 (a)(5), declares that "pictorial, graphic, and sculptural works" are copyrightable. This is why Pivot Point refers to Mara as a "sculpture." But a definitional provision in § 101 adds:

"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 utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

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 hair styling. This factual dispute might have legal significance 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 "generally" sells Mara with paintedon 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.)

Mara can be copyrighted "insofar as [its] form but not [its] mechanical or utilitarian aspects are concerned" — and then "only to the extent that [its] . . . sculptural features that can be identified separately from, and are capable of existing independently of the utilitarian aspects of the article." (Emphasis added.) Employment in practicing makeup skills is one "utilitarian aspect" of Mara. It has been registered, so it enjoys a presumption of protection, 17 U.S.C. § 410 (c), but the question remains whether that presumption survives an analysis of the statute. Because the Copyright Office has not explained its decision to register Mara and Liza, it does not receive the benefit of what must now be called Mead-Skidmore deference. See United States v. Mead Corp., 121 S.Ct. 2164 (2001); Skidmore v. Swift & Co., 323 U.S. 134 (1944).

The separate-identification ("conceptual separability") and separate-existence ("physical separability") requirements were added to the Copyright Act in 1976, in apparent response to the holding of Mazer v. Stein, 347 U.S. 201 (1954), that a sculpture of a dancer incorporated into the base of a lamp may be copyrighted. (The history is laid out in William F. Patry, 1. Copyright Law & Practice 256-76 (1994).) Congress codified the outcome of Mazer — for the sculptural elements could have been divorced from the lighting and sold separately — while limiting its potential for extension, which would blur if not eliminate the distinction between copyrights and design patents. An extension of Mazer to the design aspects of all utilitarian articles also would set at naught the principle of trademark law that a seller lacks intellectual-property rights in the functional aspects of its wares. See TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S.Ct. 1255 (2001); W.T. Rogers Co. v. Keene, 778 F.2d 334 (7th Cir. 1985). Functionality is the domain of patent law. But all functional items have aesthetic qualities, which if copyrightable could produce a patent-like protection, and for a period well exceeding the length of a patent. See American Dental Association v. Delta Dental Plans Association, 126 F.3d 977, 980 (7th Cir. 1997). 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.

"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: Principles, Law & Practice § 2.5.3 at 99 (1989). Both physical separability and conceptual separability can be hard to pin down, because these are not natural attributes of the world but are legal constructs created to make subtle distinctions between copyright and patent (or trade dress) law. There is even debate about whether the statute contains one separability element or two — and, if one, which one (physical or conceptual separability).

Physical separability is the more understandable of the two, if also the more arbitrary. A lamp without a dancer carved into its base still illuminates the room, and a sculpture of a Balinese dancer may be sold separately. Likewise a decorated belt buckle may be sold as an objet d'art to someone who does not need it to hold up his pants. See Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980). But the general appearance (that is to say, the industrial design) of a lamp is not separable from the lamp itself, and thus may not be copyrighted. Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C. Cir. 1978). Any other view would use the copyright laws to overturn TrafFix and many other cases holding that people are free to copy and sell useful articles that do not have patent protection. See, e.g., Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964). Using physical separability as a touchstone is arbitrary in the sense that it protects designs that could in principle have a separate existence even if that possibility is neither the source of the object's value nor likely to occur in the marketplace. It invites the question why this scope of protection, and not some other. But it has the virtue of being administrable by courts and of demarking the domains of copyright, patent, and trade dress from each other, and from the public domain. Treating physical separability as a requirement independent of conceptual separability also has the virtue of giving every phrase of the statute some work to do.

If physical separability is essential, then Mara is not copyrightable. A mannequin head without a neck, or with different eyes and musculature, would not serve as well, and would not serve at all to the extent that any part of Mara's utilitarian value is applying makeup or teaching the art of matching hair styles to facial features. 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. Pivot Point set out to design a "realistic" mannequin not because more fashion-model-like qualities would be aesthetically pleasing, but because they would be useful in training students how to style hair. Attributes such as the length of the neck, the shape of the eyes and nose, and the articulation of the muscles and tendons in the neck and cheek, aren't separable from the mannequin head. A head removed from its neck or an eye socket detached from a face could not be used in beauty schools for either practice or display. A mannequin head with no neck, or with a nose but no cheeks, would be viewed as grotesque, and hence not useful in beauty schools. An ovoid shape with no eyes or nose could hold up a wig, but it would be less useful in teaching and making aesthetic choices that are important to beauty-school training. No surprise, then, that Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 418-19 (2d Cir. 1985), holds that mannequins of human torsos are not copyrightable sculptural works. It is hard to see why mannequins of human heads should be treated differently. Pivot Point does not try very hard to distinguish Carol Barnhart its papers scarcely mention that decision, despite its considerable overlap with this case.

Conceptual separability differs from physical separability by asking not whether the features to be copyrighted 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 amendments, the second circuit in Kieselstein-Cord purported to adopt conceptual separability as the exclusive test (632 F.2d at 992, contrasting that approach with Esquire, 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 ยง 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 ...


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