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Characters and Useful Articles
  • 1 DC Comics v. Towle

    1
    DC COMICS, Plaintiff-Appellee,
    v.
    MARK TOWLE, an individual, DBA Garage Gotham, Defendant-Appellant.

    3
    No. 13-55484.
    4

    United States Court of Appeals, Ninth Circuit.

    Argued and Submitted February 5, 2015—Pasadena, California.
    Filed September 23, 2015.

    5

    Larry Zerner (argued), Law Offices of Larry Zerner, Los Angeles, California; Edwin F. McPherson and Tracy B. Rane, McPherson Rane LLP, Los Angeles, California, for Defendant-Appellant.

    6

    James D. Weinberger (argued), Roger L. Zissu, and Leo Kittay, Fross Zelnick Lehrman & Zissu, P.C., New York, New York; J. Andrew Coombs, J. Andrew Coombs, A Professional Corporation, Glendale, California, for Plaintiff-Appellee.

    7

    Before: Michael J. Melloy,[1] Jay S. Bybee, and Sandra S. Ikuta, Circuit Judges.

    8

    Opinion by Judge Ikuta

    9
    OPINION
    10
    IKUTA, Circuit Judge.
    11

    We are asked to decide whether defendant Mark Towle infringed DC Comics' exclusive rights under a copyright when he built and sold replicas of the Batmobile, as it appeared in the 1966 television show Batman and the 1989 film BATMAN. Holy copyright law, Batman!

    12
    I
    13

    DC Comics (DC) is the publisher and copyright owner of comic books featuring the story of the world-famous character, Batman. Since his first comic book appearance in 1939, the Caped Crusader has protected Gotham City from villains with the help of his sidekick Robin the Boy Wonder, his utility belt, and of course, the Batmobile.

    14

    Originally introduced in the Batman comic books in 1941, the Batmobile is a fictional, high-tech automobile that Batman employs as his primary mode of transportation. The Batmobile has varied in appearance over the years, but its name and key characteristics as Batman's personal crimefighting vehicle have remained consistent. Over the past eight decades, the comic books have continually depicted the Batmobile as possessing bat-like external features, ready to leap into action to assist Batman in his fight against Gotham's most dangerous villains, and equipped with futuristic weaponry and technology that is "years ahead of anything else on wheels."

    15

    Since its creation in the comic books, the Batmobile has also been depicted in numerous television programs and motion pictures. Two of these depictions are relevant to this case: the 1966 television series Batman, starring Adam West, and the 1989 motion picture BATMAN, starring Michael Keaton.

    16

    The 1966 Batman television series was the product of a licensing agreement between DC's predecessor, National Periodical Publications, Inc. (National Periodical) and the American Broadcasting Company (ABC). In 1965, National Periodical entered into a licensing agreement with ABC (the 1965 ABC Agreement) in which it granted ABC "an exclusive license to produce a series of half-hour television programs . . . based upon the literary property consisting of the comic book and comic strip stories entitled `Batman' . . . including the characters therein." This exclusive right included the right to "translate, adapt, [or] arrange" the Batman literary property "to such extent as ABC may desire" in the making of the television programs, and the right to secure copyrights in the television programs produced. The agreement also provided that "[a]ll rights in the property not specifically granted to ABC are hereby reserved to and may be exercised by National at all times during the term of this agreement" except as otherwise expressly stated in the agreement. National Periodical's reserved rights included "[a]ll rights of publication," and the exclusive merchandising rights to all products manufactured or distributed under the name of any character in the Batman comic books.

    17

    Under this agreement, ABC (through a series of sublicensing agreements) produced the 1966 television show starring Adam West as Batman. In addition to Batman, Robin, and the use of visual onomatopoeia that flashed on screen during fight scenes—Pow! Boff! Thwack!—the television series featured the Batmobile. The design of the Batmobile did not directly copy any iterations of the Batmobile as it appeared in the comic books. As in the comic books, however, the Batmobile in the 1966 television show maintained a bat-like appearance and was equipped with state-of-the-art weaponry and technology.[2]

    18

    In 1979, DC again licensed its rights in the Batman literary property, this time to Batman Productions, Inc. (BPI). In the agreement (the 1979 BPI Agreement), DC granted BPI the exclusive right to create a motion picture based on the "Property," which was defined to include "[t]he names, titles, fictional locations and fictional conveyances . . . as depicted and contained in the comic magazines [published by DC], which are identifiable with or associated with the fictional character known as `Batman,' such as . . . that certain conveyance known as the `Batmobile.'" The 1979 BPI Agreement also granted BPI the right to "adapt, use, . . . modify, [or] alter . . . the Property" for the purpose of producing the motion picture. Like the 1965 ABC Agreement, the 1979 BPI Agreement provided that "[a]ll rights in the Property not specifically granted to" BPI under the agreement "are reserved to DC and may be exercised by DC at all times without any limitation or restriction whatsover except as specifically set forth herein." These reserved rights included "[a]ll rights of publication in and to the Property," as well as "[a]ll `merchandising rights'" in "products manufactured or distributed under the name of or using a representation of `Batman' or any other character or thing included in the Property . . . or under a name which incorporates any phrase, clause or expression used in DC's comic strips or comic magazines. . . ."

    19

    BPI subsequently sub-licensed its rights to Warner Bros., Inc., who eventually (through a number of additional sublicensing agreements) produced the 1989 motion picture BATMAN, starring Michael Keaton as Batman. Like the 1966 television series, the 1989 motion picture featured a Batmobile that was physically distinct from the Batmobile portrayed in the comic books and the 1966 television series. Nonetheless, the Batmobile as portrayed in the motion picture retained a bat-like physical appearance and was again equipped with futuristic technology and crime-fighting weaponry.[3]

    20

    Defendant Mark Towle produces replicas of the Batmobile as it appeared in both the 1966 television show and 1989 motion picture as part of his business at Gotham Garage, where he manufactures and sells replicas of automobiles featured in motion pictures or television programs. Towle concedes that these replicas copy the designs of the Batmobile as depicted on television and in the motion picture, though they do not copy every feature. Towle then sells these vehicles for approximately $90,000 to "avid car collectors" who "know the entire history of the Batmobile." Towle also sells kits that allow customers to modify their cars to look like the Batmobile, as it appeared in the 1966 television show and the 1989 motion picture.

    21

    Before DC brought this lawsuit, Towle advertised each replica as the "Batmobile," and used the domain name batmobilereplicas.com to market his business. He also advertised that the replicas included such features as "custom bat insignias, wheel bats, [and a] bat steering wheel," and would attract attention due to the fame of the Batmobile. By his own admission, Towle is not authorized by DC to manufacture or sell any products bearing DC's copyright or trademark.

    22

    In May 2011, DC filed this action against Towle, alleging, among other things, causes of action for copyright infringement, trademark infringement, and unfair competition arising from Towle's manufacture and sale of the Batmobile replicas.[4] Towle denied that he had infringed upon DC's copyright. He claimed that the Batmobile as it appeared in the 1966 television show and 1989 motion picture was not subject to copyright protection. Alternatively, Towle argued that DC did not own the copyright in the Batmobile as it appeared in either production. Towle also asserted the affirmative defense of laches. The parties subsequently filed cross motions for partial summary judgment as to DC's trademark, copyright, and unfair competition claims, and as to Towle's laches defense.

    23

    In a published order, the district court granted in part and denied in part DC's motion for summary judgment, and denied Towle's cross motion for summary judgment. DC Comics v. Towle, 989 F. Supp. 2d 948 (C.D. Cal. 2013). First, the district court held that the Batmobile was a character entitled to copyright protection. In reaching this conclusion, the district court made a number of findings. Among other things, it found that the Batmobile "is known by one consistent name that identifies it as Batman's personal vehicle," and, although some of its physical traits have changed over time, several have remained consistent, including its "high-tech gadgets and weaponry," "bat-like motifs," and its jet black color. Additionally, the district court found that the Batmobile is always "depicted as being swift, cunning, strong and elusive," and is even portrayed as a "superhero" and "Batman's sidekick, if not an extension of Batman's own persona."[5]

    24

    Second, the district court held that DC maintained a copyright in the Batmobile as it appeared in both the 1966 television show and the 1989 motion picture based on its ownership of the merchandising rights. Alternatively, the district court concluded that DC owns a copyright in the Batmobile as it appeared in each production because the appearance of the Batmobile in each production was derived from the Batmobile depicted in DC's comic books. Finally, the district court concluded that Towle infringed upon DC's copyright because he copied the Batmobile as it appeared in the 1966 and 1989 productions in his replicas. Accordingly, the district court granted summary judgment on the copyright infringement claim to DC.

    25

    The district court also granted summary judgment to DC on Towle's affirmative laches defense to the trademark infringement claim. The court found that Towle admitted that he knew of the Batman property and the various bat emblems and symbols, and did not dispute "that he intentionally copied the designs" of the Batmobile as it appeared in the 1966 television show and 1989 motion picture, which included DC's Batman trademarks. He also intentionally referred to his replicas as "Batmobiles." Therefore, the court concluded that Towle acted in bad faith and intentionally copied DC's trademarks "so as to associate his products with the Batman films and television show."

    26

    Finally, the court denied DC's summary judgment motion on Towle's laches defense to the copyright infringement claim because it determined that there was a genuine dispute of fact as to whether Towle was aware that copying the Batmobile as it appeared in the 1966 television show and 1989 motion picture constituted copyright infringement.

    27

    After the district court issued its decision, the parties entered into a joint stipulation in which they agreed that the district court would enter a judgment against Towle on DC's copyright infringement and other claims. They also agreed that, except as provided in the stipulation, all claims were to be dismissed with prejudice. The district court entered a judgment consistent with this stipulation on February 22, 2013, and Towle timely appealed.

    28

    Because the parties entered into a stipulation that finalized the district court order, we have jurisdiction over this appeal under 28 U.S.C. § 1291. See Dannenberg v. Software Toolworks Inc., 16 F.3d 1073, 1074-75 (9th Cir. 1994).

    29
    II
    30

    In order to prevail on its claim for copyright infringement, DC must prove that it owns a copyright in the Batmobile as it appeared in the 1966 television series and 1989 movie, and that Towle infringed that copyright by creating unauthorized replicas. See Entm't Research Grp., Inc. v. Genesis Creative Grp., Inc., 122 F.3d 1211, 1217 (9th Cir. 1997).

    31

    To the Batmobile!

    32
    A
    33

    We begin with the question whether the Batmobile, as it appears in the comic books, television series, and motion picture, is entitled to copyright protection. See Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1073 (9th Cir. 2000). In the context of copyright law, where, as here, "the question requires us to consider legal concepts in the mix of fact and law and to exercise judgment about the values that animate legal principles, . . . the question should be classified as one of law and reviewed de novo." Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 201 (9th Cir. 1989).

    34

    Courts have recognized that copyright protection extends not only to an original work as a whole, but also to "sufficiently distinctive" elements, like comic book characters, contained within the work. Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213, 1224 (9th Cir. 2008). Although comic book characters are not listed in the Copyright Act, we have long held that such characters are afforded copyright protection. See Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir. 1978). In Air Pirates, for instance, we considered a number of subversive comic books that portrayed well-known Disney characters as being active participants in "a free thinking, promiscuous, drug ingesting counterculture." Id. at 753. In holding that the Disney characters were copyrightable (and that Disney's copyright in those characters had been infringed), we distinguished a prior decision suggesting that literary "characters ordinarily are not copyrightable," id. at 755 (citing Warner Bros. Pictures, Inc. v. Columbia Broad. Sys., Inc., 216 F.2d 945 (9th Cir. 1954)), on the grounds that a comic book character "has physical as well as conceptual qualities" and "is more likely to contain some unique elements of expression" than a purely literary character. Id.[6] (citing Detective Comics, Inc. v. Bruns Publications Inc., 111 F.2d 432 (2d Cir. 1940) (holding that comic book characters are copyrightable); Fleischer Studios v. Freundlich, 73 F.2d 276 (2d Cir. 1934) (same); King Features Syndicate v. Fleischer, 299 F. 533 (2d Cir. 1924) (same)). We subsequently held that characters in a television series or a motion picture may also be entitled to copyright protection. See Olson v. National Broadcasting Co., 855 F.2d 1446 (9th Cir. 1988).

    35

    Not every comic book, television, or motion picture character is entitled to copyright protection. We have held that copyright protection is available only "for characters that are especially distinctive." Halicki, 547 F.3d at 1224. To meet this standard, a character must be "sufficiently delineated" and display "consistent, widely identifiable traits." Rice v. Fox Broadcasting Co., 330 F.3d 1170 (9th Cir. 2003) (citing Toho Co., Ltd. v. William Morrow & Co., Inc., 33 F. Supp. 2d 1206, 1215 (C.D. Cal.1998) (Godzilla)). A masked magician "dressed in standard magician garb" whose role "is limited to performing and revealing the magic tricks," for example, is not "an `especially distinct' character differing from an ordinary magician in a manner that warrants copyright protection." Id. Further, characters that have been "lightly sketched" and lack descriptions may not merit copyright protection. Olson, 855 F.2d at 1452-53.

    36

    We have previously determined that an automotive character can be copyrightable. See Halicki, 547 F.3d at 1224. In Halicki, we considered whether "Eleanor," a car that appeared in both the original 1971 and 2000 remake motion picture Gone in 60 Seconds, could be entitled to copyright protection as a character. Id. at 1224-25. Considering Eleanor's persistent attributes in both the original and remake of Gone in 60 Seconds, we concluded that Eleanor met some of the key factors necessary to qualify for copyright protection. Id. at 1225. We first noted that Eleanor was more like a comic book character than a literary character given Eleanor's "physical as well as conceptual qualities." Id. We also stated that Eleanor "displays consistent, widely identifiable traits and is especially distinctive." Id. (alteration, citation, and internal quotation marks omitted). We gave several examples of these traits. First, we noted that "[i]n both films, the thefts of the other cars go largely as planned, but whenever the main human character tries to steal Eleanor, circumstances invariably become complicated." Id. Second, we noted that in the original, "the main character says `I'm getting tired of stealing this Eleanor car,'" and in the remake "the main character refers to his history with Eleanor." Id. Despite this evidence of distinctive traits, we were sensitive to the fact that the district court had implied that Eleanor was deserving of copyright protection, but had not directly examined this "fact-intensive issue." Id. Therefore, we remanded the issue to the district court to decide in the first instance. Id.

    37

    As indicated in Halicki, a character may be protectable if it has distinctive character traits and attributes, even if the character does not maintain the same physical appearance in every context. As the Eighth Circuit has recognized, "the presence of distinctive qualities apart from visual appearance can diminish or even negate the need for consistent visual appearance." Warner Bros. Entm't, Inc. v. X One X Prods., 644 F.3d 584, 599 n.8 (8th Cir. 2011). For example, in Halicki, Eleanor's ability to consistently disrupt heists by her presence was more pertinent to our analysis of whether the car should qualify as a sufficiently distinctive character than Eleanor's make and model. 547 F.3d at 1225. Indeed, Halicki put no weight on the fact that Eleanor was a customized yellow 1971 Fastback Ford Mustang in one film, and a silver 1967 Shelby GT-500 in another.

    38

    Similarly, district courts have determined that James Bond, Batman, and Godzilla are characters protected by copyright, despite their changes in appearance. See Metro-Goldwyn-Mayer, Inc. v. Am. Honda Motor Co., 900 F. Supp. 1287, 1295-96 (C.D. Cal. 1995) (James Bond) (cited with approval in Rice); Toho Co. v. William Morrow & Co., 33 F. Supp. 2d 1206, 1216 (C.D. Cal. 1998) (Godzilla) (cited with approval in Rice); Sapon v. DC Comics, No. 00 CIV. 8992(WHP), 2002 WL 485730, at *3-4 (S.D.N.Y. Mar. 29, 2002) (Batman). In each instance, courts have deemed the persistence of a character's traits and attributes to be key to determining whether the character qualifies for copyright protection. The character "James Bond" qualifies for copyright protection because, no matter what the actor who portrays this character looks like, James Bond always maintains his "cold-bloodedness; his overt sexuality; his love of martinis `shaken, not stirred;' his marksmanship; his `license to kill' and use of guns; his physical strength; [and] his sophistication." Metro-Goldwyn-Mayer, 900 F. Supp. at 1296. Similarly, while the character "Godzilla" may have a different appearance from time to time, it is entitled to copyright protection because it "is always a pre-historic, firebreathing, gigantic dinosaur alive and well in the modern world." Toho Co., 33 F. Supp. 2d at 1216. In short, although James Bond's, Godzilla's, and Batman's "costume and character have evolved over the years, [they have] retained unique, protectable characteristics" and are therefore entitled to copyright protection as characters. Sapon, 2002 WL 485730, at *3-4.

    39

    We read these precedents as establishing a three-part test for determining whether a character in a comic book, television program, or motion picture is entitled to copyright protection. First, the character must generally have "physical as well as conceptual qualities." Air Pirates, 581 F.2d at 755. Second, the character must be "sufficiently delineated" to be recognizable as the same character whenever it appears. See Rice, 330 F.3d at 1175. Considering the character as it has appeared in different productions, it must display consistent, identifiable character traits and attributes, although the character need not have a consistent appearance. See Halicki, 547 F.3d at 1224. Third, the character must be "especially distinctive" and "contain some unique elements of expression." Halicki, 547 F.3d at 1224. It cannot be a stock character such as a magician in standard magician garb. Rice, 330 F.3d at 1175. Even when a character lacks sentient attributes and does not speak (like a car), it can be a protectable character if it meets this standard. Halicki, 547 F.3d at 1224.

    40

    We now apply this framework to this case. Because (unlike in Halicki) the district court here addressed this question in detail, we consider its factual findings in analyzing this issue. Cf. Halicki, 547 F.3d at 1225. First, because the Batmobile has appeared graphically in comic books, and as a three-dimensional car in television series and motion pictures, it has "physical as well as conceptual qualities," and is thus not a mere literary character. Air Pirates, 581 F.2d at 755.

    41

    Second, the Batmobile is "sufficiently delineated" to be recognizable as the same character whenever it appears. See Rice, 330 F.3d at 1175. As the district court determined, the Batmobile has maintained distinct physical and conceptual qualities since its first appearance in the comic books in 1941. In addition to its status as "a highly-interactive vehicle, equipped with high-tech gadgets and weaponry used to aid Batman in fighting crime," the Batmobile is almost always bat-like in appearance, with a bat-themed front end, bat wings extending from the top or back of the car, exaggerated fenders, a curved windshield, and bat emblems on the vehicle. This bat-like appearance has been a consistent theme throughout the comic books, television series, and motion picture, even though the precise nature of the bat-like characteristics have changed from time to time.

    42

    The Batmobile also has consistent character traits and attributes. No matter its specific physical appearance, the Batmobile is a "crime-fighting" car with sleek and powerful characteristics that allow Batman to maneuver quickly while he fights villains. In the comic books, the Batmobile is described as waiting "[l]ike an impatient steed straining at the reins . . . shiver[ing] as its super-charged motor throbs with energy" before it "tears after the fleeing hoodlums" an instant later. Elsewhere, the Batmobile "leaps away and tears up the street like a cyclone," and at one point "twin jets of flame flash out with thunderclap force, and the miracle car of the dynamic duo literally flies through the air!"[7] Like its comic book counterpart, the Batmobile depicted in both the 1966 television series and the 1989 motion picture possesses "jet engine[s]" and flame-shooting tubes that undoubtedly give the Batmobile far more power than an ordinary car. Furthermore, the Batmobile has an ability to maneuver that far exceeds that of an ordinary car. In the 1966 television series, the Batmobile can perform an "emergency bat turn" via reverse thrust rockets. Likewise, in the 1989 motion picture, the Batmobile can enter "Batmissile" mode, in which the Batmobile sheds "all material outside [the] central fuselage" and reconfigures its "wheels and axles to fit through narrow openings."[8]

    43

    Equally important, the Batmobile always contains the most up-to-date weaponry and technology. At various points in the comic book, the Batmobile contains a "hot-line phone . . . directly to Commissioner Gordon's office" maintained within the dashboard compartment, a "special alarm" that foils the Joker's attempt to steal the Batmobile, and even a complete "mobile crime lab" within the vehicle. Likewise, the Batmobile in the 1966 television series possesses a "Bing-Bong warning bell," a mobile Bat-phone, a "Batscope, complete with [a] TV-like viewing screen on the dash," and a "Bat-ray." Similarly, the Batmobile in the 1989 motion picture is equipped with a "pair of forward-facing Browning machine guns," "spherical bombs," "chassismounted shinbreakers," and "side-mounted disc launchers."

    44

    Because the Batmobile, as it appears in the comic books as well as in the 1966 television show and 1989 motion picture, displays "consistent, identifiable character traits and attributes," the second prong of the character analysis is met here.

    45

    Third, the Batmobile is "especially distinctive" and contains unique elements of expression. In addition to its status as Batman's loyal bat-themed sidekick complete with the character traits and physical characteristics described above, the Batmobile also has its unique and highly recognizable name. It is not merely a stock character.

    46

    Accordingly, applying our three-part test, we conclude that the Batmobile is a character that qualifies for copyright protection.

    47

    Towle raises two arguments against this conclusion. First, he points out that the Batmobile has at times appeared without its signature sleek "bat-like" features. He notes that in a 1988 comic book rendition, the Batmobile appears as a heavily armored tank with large tires and a rocket launcher. The Batmobile portrayed in the 1989 motion picture could also transform into a Batmissile. As we have noted, however, a consistent appearance is not as significant in our analysis as consistent character traits and attributes. The changes in appearance cited by Towle resemble costume changes that do not alter the Batmobile's innate characteristics, any more than James Bond's change from blue swimming trunks (in Casino Royale) to his classic tuxedo affects his iconic character. In context, the depictions of the Batmobile as a tank or missile promote its character as Batman's crime-fighting super car that can adapt to new situations as may be necessary to help Batman vanquish Gotham City's most notorious evildoers. See Halicki, 547 F.3d at 1224-25.

    48

    Second, Towle argues that a jury should decide the question whether the Batmobile displayed unique elements of expression and consistent, widely identifiable traits. We disagree. We have previously recognized that "[w]hether a particular work is subject to copyright protection is a mixed question of fact and law subject to de novo review." Societe Civile Succession Guino v. Renoir, 549 F.3d 1182, 1185 (9th Cir. 2008). Neither party disputes the relevant facts regarding the Batmobile here. Accordingly, we are well-equipped to determine whether, as a matter of law, these undisputed facts establish that the Batmobile is an "especially distinctive" character entitled to copyright protection.

    49
    B
    50

    Having concluded that the Batmobile is a copyrightable character, we next consider whether Towle's copies of the Batmobile as it appeared in the 1966 and 1989 productions infringed on DC's copyright. Here, Towle does not contest that his replicas copy the Batmobile as it appeared in the 1966 and 1989 productions, even if they do not copy every feature. Rather, Towle's main argument is that DC does not own any copyright interest in the 1966 and 1989 productions and therefore lacks standing to pursue its copyright infringement claim against Towle.

    51

    To analyze Towle's argument, we begin with the applicable legal framework. Under the Copyright Act, "copyright ownership `vests initially in the author or authors of the work,' which is generally the creator of the copyrighted work." U.S. Auto Parts Network, Inc. v. Parts Geek, LLC, 692 F.3d 1009, 1015 (9th Cir. 2012) (quoting 17 U.S.C. § 201(a)). The owner of a copyright has a number of exclusive rights, including the right "to prepare derivative works" based on its original work of authorship, 17 U.S.C. § 106. A derivative work is a "work based upon one or more preexisting works that recasts, transforms, or adapts the preexisting work," Parts Geek, 692 F.3d at 1015-16 (alterations omitted) (quoting 17 U.S.C. § 101), such as a motion picture that is based on a literary work, see, e.g., Stewart v. Abend, 495 U.S. 207, 212-14 (1990), a threedimensional costume based upon two-dimensional cartoon characters, see Entm't Research Grp., 122 F.3d at 1218, or three-dimensional figurines based on cartoon characters, Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 909 (9th Cir. 1980). If an unauthorized third party prepares a derivative work, the copyright owner of the underlying work can sue for infringement. See Silvers v. Sony Pictures Entm't, Inc., 402 F.3d 881, 885 (9th Cir. 2005) (en banc) (citing 17 U.S.C. § 501(b)); see also, e.g., Air Pirates, 581 F.2d at 754-55; Durham Indus., 630 F.2d at 909.

    52

    A copyright owner also has the exclusive right to "authorize others to prepare derivative works based on their copyrighted works." Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965, 967 (9th Cir. 1992). When a copyright owner authorizes a third party to prepare a derivative work, the owner of the underlying work retains a copyright in that derivative work with respect to all of the elements that the derivative creator drew from the underlying work and employed in the derivative work. See Stewart, 495 U.S. at 223. By contrast, the creator of the derivative work has a copyright only as to those original aspects of the work that the derivative creator contributed, and only to the extent the derivative creator's contributions are "more than trivial." Parts Geek, 692 F.3d at 1016; see also Stewart, 495 U.S. at 223. Moreover, a copyright in a derivative work "must not in any way affect the scope of any copyright protection in that preexisting material." Id.; see 17 U.S.C. § 103(a) ("The copyright in a . . . derivative work . . . is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material."). Logically, therefore, if a third party copies a derivative work without authorization, it infringes the original copyright owner's copyright in the underlying work to the extent the unauthorized copy of the derivative work also copies the underlying work.

    53

    We reached a similar conclusion in Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1447-48 (9th Cir. 1994). There, Apple alleged that Microsoft infringed its copyright in the graphical user interface called the Lisa Desktop, as well as its copyright in a graphical user interface called the Macintosh Finder Desktop, which was a derivative work based on the Lisa Desktop. Id. at 1438 & n.1. Because the Finder Desktop did not contain any separately copyrightable original elements, the district court concluded that Apple could not bring a copyright infringement claim for Microsoft's alleged infringement of that work. Id. at 1447. We reversed, holding that Apple could bring a copyright infringement suit for the alleged copying of both the Lisa Desktop and the derivative Finder Desktop, because of Apple's copyright in the underlying work. Id. at 1447-48. In reaching this conclusion, we cited with approval the First Circuit's conclusion in Gamma Audio & Video that the owner of an exclusive right in an underlying work could "base [an] infringement suit on derivative works." Id. (citing Gamma Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106, 1111-12 (1st Cir. 1993)).

    54

    Our sister circuits also agree with this conclusion. See, e.g., Montgomery v. Noga, 168 F.3d 1282, 1293 (11th Cir. 1999); Gamma Audio & Video, Inc., 11 F.3d 1106. In Gamma Audio & Video, the owner of a copyright in a Chinese language television program had authorized a party to produce a derivative work, a Cambodian language version of the program. 11 F.3d at 1110. When an unauthorized third party copied this Cambodian language version (the derivative work), the First Circuit concluded that the owner of the copyright in the Chinese language version (the underlying work) could sue the third party for copyright infringement because "[a]ny elements that the author of the derivative work borrowed from the underlying work, such as the video images in the Chinese language episodes . . . remain protected by the copyrights in the underlying work." Id. at 1112. Accordingly, it was "irrelevant that what was actually distributed by [the unauthorized third party] was the derivative and not the underlying work." Id.

    55

    In sum, as a leading copyright commentator explained, "if the material copied was derived from a copyrighted underlying work, this will constitute an infringement of such work regardless of whether the defendant copied directly from the underlying work, or indirectly via the derivative work." 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 3.05, at 3-34.31 (Matthew Bender, Rev. Ed.) (hereafter Nimmer on Copyright). This conclusion is consistent with our determination that a copyright in an authorized derivative work "must not in any way affect the scope of any copyright protection in" the underlying work. Parts Geek, 692 F.3d at 1016 (quoting Entm't Research Grp., 122 F.3d at 1220 (quoting Durham Indus., 630 F.2d at 909)). Accordingly, the author of an underlying work is entitled to sue a third party who makes an unauthorized copy of an authorized derivative work to the extent that the material copied derived from the underlying work.

    56

    Applying these principles, we conclude that DC owns a copyright interest in the Batmobile character, as it is depicted in the 1966 and 1989 productions. There is no dispute that DC is the original creator of the Batmobile character. While DC licensed rights to produce derivative works of this character in the 1965 ABC Agreement and the 1979 BPI Agreement, DC did not transfer its underlying rights to the Batmobile character.[9] DC therefore owns the copyright in the Batmobile character, as expressed in the 1966 and 1989 productions, at least to the extent these productions drew on DC's underlying work. Stewart, 495 U.S. at 223. Accordingly, it is irrelevant that Towle's replica Batmobiles were an indirect copy of the Batmobile character, because DC is entitled to sue for infringement of its underlying work.[10] See Apple Computer, 35 F.3d 1447-48; Gamma Audio & Video, 11 F.3d at 1111-12.

    57

    Towle argues that his replicas of the Batmobile as it appeared in the 1966 and 1989 productions do not infringe on DC's underlying work because those versions of the Batmobile look substantially different from any particular depiction of the Batmobile in the comic books. We reject this argument. As a copyrightable character, the Batmobile need not have a consistent appearance in every context, so long as the character has distinctive character traits and attributes. See, e.g., Warner Bros. Entm't, Inc., 644 F.3d at 599 n.8. For instance, as we explained above, an automotive character may be copyrightable even if it appears as a yellow Fastback Ford Mustang in one film, and a silver 1967 Shelby GT-500 in another. Halicki, 547 F.3d at 1218, 1224. Here, DC retained its copyright in the Batmobile character even though its appearance in the 1966 and 1989 productions did not directly copy any comic book depiction. Because Towle produced a three-dimensional expression of the entire Batmobile character as it appeared in the 1966 and 1989 productions, and the Batmobile character in each of those productions was derived from DC's underlying work, we conclude that Towle's replicas necessarily copied some aspects of DC's underlying works. See e.g., Durham Indus., 630 F.2d at 909 (noting that three-dimensional "small, plastic, wind-up toys" of Disney characters Mickey, Donald, and Pluto were derivative works of these characters). Therefore, while we question whether a derivative work based on a character could ever have any independently copyrightable elements that would not "affect the scope of any copyright protection in that preexisting material," Parts Geek, 692 F.3d at 1016, we need not address that issue here.

    58

    For the same reason, we reject Towle's argument that his replicas of the Batmobile as it appeared in the 1966 television series and 1989 movie did not infringe DC's underlying work because the series and movies were produced by third parties, pursuant to sub-licensing agreements with ABC and BPI. Towle argues that while DC had an agreement with ABC and BPI to retain certain rights, DC failed to show that the agreements between ABC and BPI and the sublicensees also protected DC's interests. This argument fails because DC retained its rights to the underlying Batmobile character, and the creation of derivative works by sublicensees cannot deprive DC of such rights. DC may sue any third party who infringes on that work, even if the third party copies "indirectly via the derivative work." Nimmer on Copyright § 3.05.

    59
    C
    60

    Having established that the Batmobile character is entitled to copyright protection, and that DC owns a copyright to this character as it appears in the 1966 television series and 1989 motion picture, we conclude that Towle infringed upon these copyrights when he produced replicas of the Batmobile. While we ordinarily apply a two-part "substantial similarity" test to determine whether a plaintiff has established "copying of constituent elements of the work that are original," Funky Films, Inc. v. Time Warner Entm't Co., L.P., 462 F.3d 1072, 1076-77 (9th Cir. 2006) (internal quotation marks omitted), we need not do so where, as here, "the copying of the substance of the entire work" is admitted, Narell v. Freeman, 872 F.2d 907, 910 (9th Cir. 1989). Based on the undisputed facts, Towle's production and sale of replicas of the Batmobile, as it appeared in the 1966 and 1989 productions, infringed DC's exclusive right to produce derivative works of this character. Therefore, there is no genuine issue of material fact as to whether he infringed DC's copyrighted material. DC is entitled to judgment, and we affirm.

    61
    III
    62

    Finally, we must consider Towle's argument that the district court erred when it ruled as a matter of law that he could not assert a laches defense to DC's trademark infringement claim because he willfully infringed DC's trademarks. We have recognized an intracircuit split on whether the proper standard of review of a district court's laches determination is de novo or for an abuse of discretion. See Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829, 834 (9th Cir. 2002). We need not address this issue in this case, however, because under either standard of review, the district court did not err here. See id.

    63

    "Laches is an equitable time limitation on a party's right to bring suit," and is a valid defense to trademark infringement claims. Jarrow, 304 F.3d at 835 (internal quotation marks omitted). This doctrine does not apply, however, "in cases of willful infringement." Evergreen Safety Council v. RSA Network, Inc., 697 F.3d 1221, 1228 (9th Cir. 2012). Willful trademark infringement occurs when the defendant's actions are "willfully calculated to exploit the advantage of an established mark." Lindy Pen Co., Inc. v. Bic Pen Corp., 982 F.2d 1400, 1406 (9th Cir. 1993) (internal quotation marks omitted), superseded by statute on other grounds, Trademark Amendments Act of 1999, Pub. L. No. 106-43, 113 Stat. 218; see also Conan Props., Inc. v. Conans Pizza, Inc., 752 F.2d 145, 151 n.2 (5th Cir. 1985) (explaining that the issue with respect to the availability of a laches defense in a trademark infringement case is whether the defendant "intended to derive benefit from and capitalize on [the plaintiff's] goodwill" by using the mark).

    64

    Here, the undisputed facts establish that Towle used DC's Batman trademarks in order to exploit the advantage of those marks. Towle's advertisements recognize that the Batmobile is a famous vehicle, and boast that crowds will form around his replicas as a result of the Batmobile's fame. Additionally, Towle used DC's trademarks on his website to promote his business. He also intentionally referred to his replicas as "Batmobiles" to attract the attention of the Batman fans who constitute his customer base. Indeed, by Towle's own admission, most of his customers were fans who "usually know the entire history of the Batmobile." In light of this evidence, no reasonable juror could conclude that Towle used DC's trademarks for any reason other than to exploit the advantage of those marks.

    65

    Indeed, Towle does not argue otherwise, instead arguing that he did not knowingly and subjectively intend to confuse his buyers. Although evidence of intent to confuse buyers may be relevant to establishing that the defendant's actions were willfully calculated to exploit the advantage of an established mark, Towle points to no authority holding that such evidence is necessary, nor is the court aware of any such authority. Accordingly, the district court did not err when it concluded that Towle was barred from asserting a laches defense to DC's trademark infringement claim because he willfully infringed DC's trademarks.

    66
    IV
    67

    As Batman so sagely told Robin, "In our well-ordered society, protection of private property is essential." Batman: The Penguin Goes Straight, (Greenway Productions television broadcast March 23, 1966). Here, we conclude that the Batmobile character is the property of DC, and Towle infringed upon DC's property rights when he produced unauthorized derivative works of the Batmobile as it appeared in the 1966 television show and the 1989 motion picture. Accordingly, we affirm the district court.

    68

    AFFIRMED.

    69
    APPENDIX A
    70

     

    71
    APPENDIX B
    72

     

    73

    [1] The Honorable Michael J. Melloy, Senior Circuit Judge for the U.S. Court of Appeals for the Eighth Circuit, sitting by designation.

    74

    [2] A photo of the Batmobile depicted in the 1966 television series, as well as a photo of Towle's replica of this Batmobile, can be found in Appendix A.

    75

    [3] A photo of the Batmobile depicted in the 1989 motion picture, as well as a photo of Towle's replica of this Batmobile, can be found in Appendix B.

    76

    [4] DC clearly asserted in both its original and amended complaint that the Batmobile in all of its forms, including the 1966 television program and 1989 motion picture, is copyrightable subject matter owned by DC. We thus reject Towle's argument that DC has failed to identify the copyrights at issue in this case.

    77

    [5] The district court also concluded, in the alternative, that the 1966 and 1989 Batmobiles were entitled to copyright protection as a sculptural work under 17 U.S.C. § 102(a)(5). Because we agree that the Batmobile is a character entitled to copyright protection, we need not reach this issue.

    78

    [6] We later indicated that the analysis in Warner Bros. Pictures, Inc. v. Columbia Broad Syst., Inc., regarding the noncopyrightability of literary characters was dicta or an alternative holding. See Walt Disney Productions, 581 F.2d at 755 n.10; see also Olson v. National Broadcasting Co., 855 F.2d 1446, 1452 n.6 (9th Cir. 1988) (same).

    79

    [7] This episode causes Robin to exclaim "Whee! The Batplane couldn't do better!"

    80

    [8] Towle submitted a chart to the district court setting forth these features.

    81

    [9] Indeed, DC expressly retained all rights not specifically granted to the licensees, including the merchandising rights to all of if its characters in both the 1965 ABC Agreement and the 1979 BPI Agreement. See supra, at 5, 6. As a result, DC retained the exclusive right to produce threedimensional expressions of the Batmobile character. See Durham Indus., 630 F.2d at 909; see also Halicki, 547 F.3d at 1218, 1223-24 (concluding that because a party retained the exclusive merchandising rights in a derivative work, she could assert a claim for copyright infringement against a party producing "vehicles resembling the 1967 Shelby GT-500 `Eleanor' character that appeared in the Remake" Gone in Sixty Seconds).

    82

    [10] Because DC retains its copyright in the underlying Batmobile character, we also reject Towle's argument that the version of the Batmobile that appeared in the 1966 and 1989 productions cannot be copyrighted because the third party producers of these vehicles obtained a design patent on these works. These creators could obtain protection only for the original, independently copyrightable aspects of their work. Parts Geek, 692 F.3d at 1016. In any event, parties may now obtain both a design patent and a copyright in a work. See Registrability of Pictorial, Graphic, or Sculptural Works Where a Design Patent Has Been Issued, 60 Fed. Reg. 15605-01, 15605 (March 24, 1995).

  • 2 Pivot Point, Int'l v. Charlene Products (2004)

    1

    372 F.3d 913

    2
    PIVOT POINT INTERNATIONAL, INCORPORATED, Plaintiff-Appellant, Cross-Appellee,
    v.
    CHARLENE PRODUCTS, INCORPORATED and Peter Yau, Defendants-Appellees, Cross-Appellants.
    3

    No. 01-3888.
    No. 02-1152.
    United States Court of Appeals, Seventh Circuit.
    Argued June 6, 2003.
    Decided June 25, 2004.
    Rehearing En Banc Denied August 10, 2004.[1]

    4

    [915] Robert E. Browne (Argued), Neal, Gerber & Eisenberg, Chicago, IL, for Plaintiff-Appellant, Cross-Appellee.

    5

    James B. Meyer (Argued), Meyer & Wyatt, Gary, IN, Martin H. Redish (Argued), Mayer, Brown, Rowe & Maw, Chicago, IL, for Defendants-Appellees, Cross-Appellants.

    6

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

    7

    RIPPLE, Circuit Judge. Pivot Point International, Inc. ("Pivot Point"), brought this cause of action against Charlene Products, Inc., and its president Peter Yau (collectively "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. 

    8
    I. BACKGROUND
    9
    A. Facts
    10

    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 designer. 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.

    11

    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."

    12

    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.

    13

    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 visible 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.

    14

    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.

    15

    Pivot Point enjoyed great success with its new mannequin. To respond to customer demand, Pivot Point began marketing the Mara mannequin with different types and lengths of hair, different skin [916] tones and variations in makeup; however, 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."

    16

    At a trade show in 1989, Charlene, a wholesaler of beauty products founded by Mr. Yau,[2] 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.

    17

    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 this action.[3]

    18
    B. District Court Proceedings
    19

    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.

    20
    1. Merits
    21

    In its opinion, the district court stated that "[t]he 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 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), sculptures that may be copyrighted are limited by the language of 17 U.S.C. § 101, which provides in relevant part:

    22

    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.

    23

    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.

    24

    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 [917] drawing this line is particularly troublesome.

    25

    The statute, continued the district court, is generally recognized to suggest two types of separability: physical separability and conceptual separability. The district court explained that physical separability occurs when the ornamental nature of the object can be physically removed from the object and that

    26

    [c]onceptual 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 [v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir.1980),] purported to adopt conceptual separability as the exclusive 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 administered as just one is not a proposition that in today'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.

    27

    Id. at 4.

    28

    Despite this lack of statutory moorings, the district court nevertheless reviewed the differing formulations for conceptual 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 equally useful without it." R.401 at 5 (quoting 1 Paul Goldstein, 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. Economy Cover Corp., 773 F.2d 411, 418 (2d Cir.1985)]." Id. Applying this test led the district court to conclude that

    29

    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.

    30

    Id.

    31

    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.

    32
    2. Fee Petition
    33

    [918] Although fees are available under the 1976 Act, the district court's order made no provision for fees. Charlene, therefore, sought an award of attorneys' fees of approximately $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).

    34

    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 extending 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 Rule 83.[4]

    35

    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.

    36

    Pivot Point now appeals from the district court's summary judgment in favor of Charlene; Charlene appeals from the district court's judgment with respect to its attorneys' fee petition.

    37
    II. ANALYSIS
    38
    A. Standard of Review
    39

    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 "construe 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 judgment is appropriate. Fed.R.Civ.P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

    40
    B. Copyrightability
    41

    [919] The central issue in this case is whether the Mara mannequin is subject to copyright protection. This issue presents, at bottom, a question of statutory interpretation. We therefore 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:

    42

    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.

    43

    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 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).

    44
    1. Usefulness
    45

    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 portrays 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 mannequins, are not useful articles. Specifically, the Fourth Circuit explained that

    46

    [a] mannequin provides the creative form and expression 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 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.

    47

    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 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 functions similar to those of animal [920] and fish mannequins, it is not a useful article and is therefore entitled to full copyright protection.

    48

    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 application. 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.

    49

    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 Rule of Civil Procedure 56.[5] Indeed, our own review of the record leads us to believe that many of the documents cited by Charlene are susceptible to more than one interpretation.

    50

    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.

    51
    2. Separability
    52

    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 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." 17 U.S.C. § 101.[6] It is common [921] 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), 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 language 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).

    53

    The difficulty in the application of this language would not have come, in all likelihood, as a surprise to the Congressional drafters. The language employed by Congress is not the language of a bright-line rule of universal application. Indeed, the circuits that have addressed the interpretative 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 implemented on a case-by-case basis through the Copyright Office and the courts.

    54

    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.

    55

    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." Although 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 courts that have grappled with this issue,[7] 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.

    56

    [922] 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, 74 S.Ct. 460, 98 L.Ed. 630 (1954) (holding that a statuette incorporated into the base of a lamp is copyrightable). When a three-dimensional 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.

    57

    It seems to be common ground between the parties and, indeed, among the courts and commentators, that the protection 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 material is incorporated.[8] The [923] difficulty lies not in the 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 "subsidiary," 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 function," Carol Barnhart, 773 F.2d at 422 (Newman, J., dissenting); 4) the artistic design was not significantly influenced by functional considerations, see Brandir Int'l, 834 F.2d at 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).

    58

    Pivot Point submits that "the test for conceptual separability 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:

    59

    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 separability may exist.

    60

    Id. at 26-27. This test, Pivot Point suggests, has the additional benefit of "satisf[ying] most, if not all, of the current definitions of conceptual separability." Id. at 27.

    61

    Charlene, by contrast, lauds the district court's adoption of Professor Goldstein's test. "Under Goldstein's test," Charlene [924] 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 traditionally conceived, and if the useful article in which it is 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.

    62

    Although both sides present thoughtful explanations for their proposed tests, we perceive shortcomings in the parties' choices. With respect to Pivot Point's focus on the article 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.

    63

    In articulating a meaningful approach to conceptual separability, 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 understanding 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.

    64

    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 explored the key aspects of the problem. We therefore turn to a study of the key stages of doctrinal development in its case law.

    65
    a.
    66

    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 separately 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 focused on the "primary" and "subsidiary" elements of the article and concluded:

    67

    We see in appellant's belt buckles conceptually separable 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 ornamental aspect of the Vaquero and Winchester buckles is conceptually separable from their subsidiary utilitarian function. This conclusion is not at variance with the [925] expressed congressional intent to distinguish copyrightable applied art and uncopyrightable industrial design. Pieces of applied art, these buckles may be considered jewelry, the form of which is subject to copyright protection.

    68

    Id. at 993 (internal citations omitted).[9]

    69
    b.
    70

    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 forms.[10] 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:

    71

    [W]hile copyright protection has increasingly been extended 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.

    72

    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 satisfying 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 considered in the aggregate, they cannot be conceptualized as existing independently of their utilitarian function.

    73

    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 ornamented 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.

    74

    Perhaps the most theoretical and comprehensive discussion 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:

    75

    How, then, is "conceptual separateness" to be determined? In my view, the answer derives from the word "conceptual." For the design features to be "conceptually separate" from the utilitarian [926] aspects of the useful article that embodies the design, the article must stimulate in the mind of the beholder a concept that is separate 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....

    76

    The "separateness" of the utilitarian and non-utilitarian concepts engendered by an article's design is itself a perplexing concept. I think the requisite "separateness" 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 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-utilitarian function. The separate concept will normally be that of a work of art.

    77

    Id. at 422-23.

    78
    c.
    79

    The Second Circuit soon addressed conceptual separability 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, Cascade 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.

    80

    The court first considered the possible tests for conceptual separability in light of its past decisions and, notably, attempted to reconcile its earlier attempts:

    81

    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 [927] 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. "Copyrightability, therefore, should turn on the relationship between 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 separability, 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 elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists.

    82

    We believe that Professor Denicola's approach provides 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 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 concerns.... 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 accompanied much of the current analysis." Id. at 745.

    83

    Id. at 1145 (footnotes omitted).

    84

    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.

    85

    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 galvanized steel, are all features that combine to make for a safe, secure, and maintenance-free system of parking bicycles and mopeds.

    86

    . . .

    87

    ... While the RIBBON Rack may be worthy of admiration for its aesthetic qualities alone, it remains nonetheless 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 [928] separate and "capable of existing independently, of, the utilitarian aspects of the article.

    88

    Id. at 1146-47.

    89
    d.
    90

    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:

    91

    A mannequin provides the creative form and expression 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 mannequin.... 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. See 17 U.S.C. § 101.

    92

    ... 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.

    93

    Id. at 494 (quoting Superior Form Builders v. Dan Chase Taxidermy Supply Co., Inc., 851 F.Supp. 222, 223 (E.D.Va.1994)).

    94

    The court, however, also considered whether, if useful, the utilitarian and aesthetic aspects of the mannequin were separable:

    95

    To the extent that an argument can be made that the mannequins in this case perform a utilitarian function — other than portraying themselves — by supporting the mounted skins, we believe the function to be conceptually 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 judgment 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).

    96

    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 and that the model, therefore, was useful in the display of the skin did not negate the artistic elements of the design.[11]

    97
    e.
    98

    [929] 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 summary 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:

    99

    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. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (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 protection from copying.

    100

    Id. at 135 (footnotes and parallel citations omitted). Additionally, the court noted the scope of the copyright protection that the Barbie dolls enjoyed:

    101

    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 competitor has taken the idea from Mattel's example, so long as the competitor [930] 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.

    102

    Id. at 136 (citations omitted).

    103
    C. Application
    104

    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 attempted to give effect to "the expressed congressional intent to distinguish copyrightable applied art and uncopyrightable industrial design." Kieselstein-Cord, 632 F.2d at 993; see also Carol Barnhart, 773 F.2d at 417-18 (reviewing legislative history in detail and concluding that, although "copyright 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 (distinguishing the animal mannequins at issue from "aesthetically pleasing articles of industrial design").

    105

    The Second Circuit cases exhibit a progressive attempt to forge a workable judicial approach capable of giving meaning 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:

    106

    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 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.

    107

    773 F.2d at 419. Thus, it was the fact that the creator of the torsos was driven by utilitarian concerns, such as how display clothes would fit on the end product, that deprived the human torsos of copyright protection.

    108

    This process-oriented approach for conceptual separability — focusing on the process of creating the object to determine whether it is entitled to copyright protection — is more fully articulated in Brandir and indeed reconciles the earlier case law pertaining to conceptual separability.

    109

    [T]he approach is consistent with the holdings of our previous cases. In Kieselstein-Cord, [931] for example, the artistic aspects 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 concerns. Though the torsos bore artistic features, it was evident the designer incorporated those features to further the usefulness of the torsos as mannequins.

    110

    Brandir, 834 F.2d at 1145.

    111

    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 functional 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.

    112

    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 reflecting the designer's artistic judgment exercised independently of functional influences." Brandir, 834 F.2d 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 separable.

    113

    Applying this test to the Mara mannequin, we must conclude that the Mara face is subject to copyright protection. 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.

    114

    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. [932] 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 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. Furthermore, 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.

    115
    Conclusion
    116

    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.

    117

    REVERSED AND REMANDED; CROSS-APPEAL DISMISSED

    118

    __________

    119

    KANNE, Circuit Judge, dissenting.

    120

    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 undermined. See American Dental Ass'n v. Delta Dental Plans Ass'n, 126 F.3d 977, 980 (7th Cir.1997).

    121

    The majority rightly assumes that Mara is a "useful article" as defined in 17 U.S.C. § 101. Opinion at 920. 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 sculptural works:

    122
    [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.
    123

    17 U.S.C. § 101 (emphasis added). As the district court noted, the statute requires, on its face, that sculptural features 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 [933] ("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.

    124

    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, 74 S.Ct. 460, 98 L.Ed. 630 (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).

    125

    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 utilitarian 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 teaching 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.

    126

    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: Principles, 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 purpose. Mara possesses neither physical nor conceptual separability.

    127

    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." Opinion at 931. 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 [934] 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 931-32.

    128

    Problematically, the majority's test for conceptual separability seems to bear little resemblance to the statute. The statute asks two questions: Does the useful article incorporate "sculptural features that can be identified separately from the utilitarian aspects" of the article? And are these features "capable of existing independently" from the utilitarian 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 "feature." 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.

    129

    Moreover, the "process-oriented approach," advocated by the majority drifts even further away from the statute. Opinion at 930. 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, cheekbones, and neck. If such features have been fully incorporated 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).

    130

    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 Charlene's questionable business practices. This is immaterial to the determination of whether the Mara doll is protected 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, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001); Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (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.

    131

    __________

    132

    [1] Chief Judge Joel M. Flaum, The Honorable Frank H. Easterbrook and The Honorable Ann Claire Williams did not participate in the consideration of the petition for rehearing en banc.

    133

    [2] Mr. Yau was not unfamiliar with Pivot Point. Shortly before founding Charlene Products in 1985, Mr. Yau had worked for Pivot Point.

    134

    [3] Charlene eventually obtained a copyright registration for its Liza mannequin.

    135

    [4] Federal Rule of Civil Procedure 83 provides:

    136

    (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 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.

    137

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

    138

    [5] The district court relied heavily on this fact in concluding that Mara is a useful object:

    139

    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 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.)

    140

    R.401 at 2.

    141

    [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 Copyright Act of 1909 ("1909 Act"); Professor Goldstein explains:

    142
    The 1909 Act, which continued protection for three-dimensional 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, 74 S.Ct. 460, 98 L.Ed. 630 (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.
    143

    Id. (quoting 37 C.F.R. § 207.8(a) (1949) and 37 C.F.R. § 202.10(c) (1959); footnotes omitted).

    144

    [7] See infra note 8.

    145

    [8] Although the district court was skeptical that the statutory language encompassed both physical and conceptual separability, 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).

    146

    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 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:

    147
    (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 utilitarian article incorporates features, such as artistic sculpture, carving, or pictorial representation, which can be identified separately and are capable of existing independently as a work of art, such features will be eligible for registration.
    148

    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 interpretation relates to a matter within the field of administrative expertise." 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:

    149
    Esquire could arguably draw some support from the statement 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 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 understanding of existing law, reinforces the Register's position.
    150

    Id. at 803-04.

    151

    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 differences, 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.

    152

    [9] Judge Weinstein (sitting by designation) dissented. See Kieselstein-Cord, 632 F.2d at 993.

    153

    [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.

    154

    [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 simplistically: "Is taxidermy different [for purposes of copyright protection]?" Id. at 321. The Second Circuit resolved that it is:

    155

    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 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.

    156

    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.

    157

     

  • 3 Shine v. Childs (2005)

    1

    382 F.Supp.2d 602 (2005)

    2
    Thomas SHINE, Plaintiff,
    v.
    David M. CHILDS and Skidmore Owings & Merrill, LLP, Defendants.

    No. 04 Civ. 8828 (MBM).

    3

    United States District Court, S.D. New York.

    August 10, 2005.

    4

    [603] [604] Andrew Baum, Paul Fields, Atul R. Singh, Michael J. Sullivan, Darby & Darby P.C., New York, New York, for Plaintiff.

    5

    Richard A. Williamson, Flemming, Zulack & Williamson, LLP, New York, New York, Marcia B. Paul, Davis Wright Tremaine LLP, New York, New York, for Defendants.

    6
    OPINION & ORDER
    7
    MUKASEY, District Judge.
    8

    Plaintiff Thomas Shine sues David M. Childs and Skidmore, Owings & Merrill, LLP (SOM) for copyright infringement under the United States Copyright Act, 17 U.S.C. § 101 — § 1332 (2000). Shine alleges that he created designs for an original skyscraper which Childs saw and later copied in the first design plan for the [605] Freedom Tower at the World Trade Center (WTC) site. Defendants move to dismiss the Complaint, or alternatively for summary judgment. For the reasons explained below, defendants' motion for summary judgment is granted in part and denied in part.

    9
    I.
    10

    The facts viewed in the light most favorable to the plaintiff, see Higgins v. Metro-North R.R. Co., 318 F.3d 422, 424 (2d Cir.2003), are as follows. In fall 1999, Shine was a student in the Masters of Architecture Program at the Yale School of Architecture. As part of the required curriculum in his program, he took a studio class on skyscrapers taught by renowned architect Cesar Pelli. (Compl.¶ 8) The object of this studio was to create a design proposal for a monumental skyscraper that would be built on West 32nd Street in Manhattan and used by the media during the 2012 Olympic Games; the building was to be adjacent to the proposed West Side stadium. See id.; Shine Decl. ¶ 5.

    11

    During the first half of October 1999, Shine developed a preliminary model for his design, which he refers to as "Shine '99" for the purposes of this litigation.[1] Plaintiff describes Shine '99 as a tower that tapers as it rises, with "two straight, parallel, roughly triangular sides, connected by two twisting facades, resulting in a tower whose top [is] in the shape of a parallelogram." (Compl.¶ 9) See id. Ex. A, pp. 1-4 (photographs of Shine '99); see also App. One.

    12

    By the end of the fall 1999 semester, Shine had developed a more sophisticated model of his design, entitled "Olympic Tower." Shine describes this structure as "a twisting tower with a symmetrical diagonal column grid, expressed on the exterior of the building, that follows the twisting surface created by the floor plates' geometry." (Id. ¶ 10) According to Shine, the column grid he designed gives rise to "an elongated diamond pattern, supporting a textured curtain wall with diamonds interlocking and protruding to create a crenelated appearance." (Id.) See id. Ex. B, pp. 1-9 (photographs of various models and sketches of Olympic Tower and its design elements); see also App. Two.

    13

    On or about December 9, 1999, Shine presented his designs for Olympic Tower to a jury of experts invited by the Yale School of Architecture to evaluate and critique its students' work. During a 30-minute presentation to the panel, Shine explained his tower's structural design, and displayed different structural and design models (including Shine '99), renderings, floor plans, elevations, sections, a site plan, and a photomontage giving a visual impression of the tower's exterior. (Shine Decl. ¶¶ 7-9) Defendant Childs was on the panel, and he praised Olympic Tower during the presentation, as did the other luminaries[2] evaluating Shine's work. When the review was completed, Shine was applauded by the jury and other visitors, which, according to Shine, is "highly unusual" at a student's final review. (Shine Decl. ¶ 10) After the presentation, Childs approached Shine, complimented Shine's color pencil rendering of Olympic Tower, and invited Shine to visit after his graduation. See Compl. ¶ 11; Shine Decl. ¶ 10.

    14

    [606] Childs' favorable reaction to Olympic Tower was also documented in Retrospecta, an annual alumni magazine[3] published by the Yale School of Architecture featuring selected works by the school's current students. The 1999-2000 edition of Retrospecta featured a large composite photographic rendering of Olympic Tower set against an imaginary New York sunset, in addition to smaller inset photographs of two of Shine's models of the tower. Favorable comments from the panel members were printed next to the photographic rendering, including the following compliment from Childs: "It is a very beautiful shape. You took the skin and developed it around the form — great!" (Compl.Ex. C) Shine does not allege that he had any contact with Childs after the December 1999 panel evaluation. However, he does claim that Childs' design for the Freedom Tower, unveiled four years later, infringed Shine '99 and Olympic Tower.

    15

    Childs did not begin work on the Freedom Tower until summer 2003. In order to choose the best possible design for the rebuilt WTC, the Lower Manhattan Development Corporation and the Port Authority of New York and New Jersey held an architectural competition in 2002 and 2003, in search of a master WTC site plan. In February 2003, Studio Daniel Libeskind's plan entitled "Memory Foundations" was selected as the winning design. See Suzanne Stephens, Imagining Ground Zero: Official and Unofficial Proposals for the World Trade Center Site 11, 28-29 (2004). In summer 2003, WTC developer Larry Silverstein asked Childs, who is a Consulting Design Partner at SOM, to begin working as design architect and project manager for the tallest building at the proposed new WTC site as conceptualized by Libeskind — the building that later would be called the Freedom Tower. Id. at 29. Libeskind was to serve as collaborating architect during the initial concept and schematic design phases. Id. at 32. In spite of what was described as a "difficult marriage" between Childs and Libeskind, see id. at 29, a design for the Freedom Tower was completed within six months, and was presented to the public at a press conference at Federal Hall in lower Manhattan on December 19, 2003. See id. at 32; Compl. ¶ 17; Durschinger Aff. ¶ 34. At this presentation, SOM and Childs displayed six large computer-generated images of the Freedom Tower, see Stephens at 34-35; two scale models of the Tower, see Durschinger Aff. Exs. N, O, and P; and a computer slide show detailing the Tower's design principles, see Durschinger Aff. Ex. Q. They also distributed a press packet containing six images of the proposed Tower, see id. Ex. R; see also App. Three.

    16

    As described by Shine, this version of the Freedom Tower "tapers as it rises and has two straight, parallel, roughly triangular facades on opposite sides, with two twisting facades joining them." (Compl.¶ 18) Shine alleges that this design is substantially similar to the form and shape of Shine '99, and that it incorporates a structural grid identical to the grid in Olympic Tower, as well as a facade design that is "strikingly similar" to the one in Olympic Tower. (Id.) Apparently, others at the Yale School of Architecture noticed the similarity between the Freedom Tower and Shine's design: According to plaintiff's expert, Yale Professor James Axley, several days after Childs unveiled the design for the Freedom Tower, one of Shine's original models for Olympic Tower "was retrieved [607] from archival storage and placed on the desk of the Dean of the School of Architecture." (Axley Decl. ¶ 7)

    17

    Shine registered Olympic Tower as an architectural work with the U.S. Copyright Office on March 30, 2004 (Compl.Ex. E), and did the same for Shine '99 on June 24, 2004 (id. Ex. D). He filed the Complaint in this action on November 8, 2004, claiming that defendants copied his designs without his permission or authorization, and stating that defendants distributed and claimed credit for his designs "willfully and with conscious disregard" for his rights in his copyrighted works. (Id. ¶ 22)

    18

    Shine requests an injunction to prevent further infringement by defendants, as well as actual damages and defendants' profits realized by their infringement. (Id. ¶¶ 27-28) Defendants move to dismiss the Complaint, or alternatively for summary judgment, claiming that Shine's works are not original and not worthy of protection, and further arguing that there is no substantial similarity between either work and the Freedom Tower.

    19

    It should be noted that in June 2005, after law enforcement authorities, among others, objected to the Freedom Tower's original design,[4] Childs, SOM, and Libeskind unveiled a substantially redesigned version of the Tower. The alleged infringing design apparently has been scrapped and is unlikely to be constructed. The new version has, at least to this court's untrained eye, little similarity to either of Shine's copyrighted works, and the court assumes that Shine makes no claim that it infringes his works. Because the alleged infringing design may never be constructed, Shine's actual damages in this action may be reduced, and he may be unable to show the need for an injunction. But because defendants' original design for the Freedom Tower remains in the public domain, Shine's infringement claim stands.

    20

    Defendants have moved under Fed.R.Civ.P. 12(b)(6) to dismiss the Complaint, or alternatively, for summary judgment under Fed.R.Civ.P. 56. Because plaintiff has treated the motion as one for summary judgment, see Pl. Br. at 11, and because both parties have submitted materials outside the Complaint that the court has found helpful, the court will consider those materials, and apply summary judgment standards. In assessing whether a genuine issue of material fact remains to be tried, the court will view the facts in the light most favorable to the nonmoving party. SCS Communications, Inc. v. Herrick Co., 360 F.3d 329, 338 (2d Cir.2004).

    21
    II.
    22

    To prevail, plaintiff must prove "`(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.'" Williams, 84 F.3d at 587 (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991)). To prove copying of original elements of his work, in addition to showing originality, plaintiff must demonstrate both that defendants actually copied his works, and that such copying was illegal because there is substantial similarity between each of his works and the alleged infringing work — the Freedom Tower. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir.1995).

    23

    Defendants argue first that neither Shine '99 nor Olympic Tower qualifies as an architectural work under the Copyright Act. They argue also that both designs are unoriginal and functional, and therefore unworthy of whatever copyright protection [608] they currently have. Finally, assuming that plaintiff's copyrights are valid, defendants deny that they copied plaintiff's designs, and assert that there is no substantial similarity between plaintiff's designs and the Freedom Tower. Plaintiff counters that Shine '99 and Olympic Tower are each original, copyrightable designs, that defendants actually copied each work, and that the Freedom Tower is substantially similar to each in different ways.

    24
    A. Architectural Works Under the Copyright Act
    25

    Prior to 1990, the United States did not allow structures to be copyrighted, except those few that did not serve any utilitarian purpose. See 1 Nimmer on Copyright § 2.20[A]. However, in 1989, the United States became a party to the Berne Convention for the Protection of Literary and Artistic Works, which required protection for "`three dimensional works relative to ... architecture.'" See id. (quoting Berne Convention for the Protection of Literary and Artistic Works, revised at Paris, July 24, 1971, art. 2, 828 U.N.T.S. 221). Membership in the Berne Convention required the United States to protect works of architecture; therefore, in 1990, Congress amended the Copyright Act, adding the Architectural Works Copyright Protection Act (AWCPA), which included architectural works as a new category of copyrightable material.

    26

    The AWCPA defines an architectural work as:

    27

    the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features.

    28

    17 U.S.C. § 101. Defendants cite various portions of the legislative history of the AWCPA to argue that Shine's models are not architectural works meriting copyright protection. They claim that Shine's works are preliminary or conceptual, and do not meet the standard of a "design of a building." They argue also that plans for the "design of a building" may be protected only if a building actually could be constructed from the plans.

    29

    Defendants cite no cases to support their reading of the AWCPA. The statute nowhere states or implies that only designs capable of construction are worthy of protection. Although our Circuit has not specifically articulated the standard by which an architectural design is to be evaluated under the Copyright Act, when considering pictorial, graphic, and sculptural (PGS) works, also protected by the Act, see 17 U.S.C. § 101, it has twice noted that plans or designs not sufficiently detailed to allow for construction still may be protected. See Attia v. Soc'y of the N.Y. Hosp., 201 F.3d 50, 57 (2d Cir.1999) ("[W]e do not mean to suggest that, in the domain of copyrighted architectural depictions, only final construction drawings can contain protected expression."); Sparaco v. Lawler, Matusky & Skelly Eng'rs LLP, 303 F.3d 460, 469 (2d Cir.2002) ("We do not mean to imply that technical drawings cannot achieve protected status unless they are sufficiently complete and detailed to support actual construction."). This reasoning should apply equally to architectural works, because our Circuit also has held that "`[i]n general, architectural works are subject to the same standards that apply to other copyrightable works.'" Attia, 201 F.3d at 53 n. 3 (quoting 1 Nimmer § 2.20[A]). It is true that "generalized ideas and concepts pertaining to the placement of elements, traffic flow, and engineering strategies," or in other words, "ideas and concepts," are not worthy of protection. Id. at 57. However, once a design includes "specific expression and [609] realization of ... ideas," copying constitutes infringement. Sparaco, 303 F.3d at 469; cf. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960) ("[N]o principle can be stated as to when an imitator has gone beyond copying the `idea' and has borrowed its `expression.' Decisions must therefore inevitably be ad hoc.") (L.Hand, J.).

    30

    Both Shine '99 and Olympic Tower are worthy of protection under the AWCPA. Shine '99 is a scale model of a twisting tower: Two of the tower's sides are smooth and taper straight toward the top creating a roughly triangular shape; the other two sides twist and taper as they rise, and one of those sides features four graded setbacks or levels that narrow as the tower rises. The top of the tower forms a parallelogram. See Compl. Ex. A, pp. 1-4; Shine Decl. ¶ 18. Shine '99, although certainly a rough model, is more than a concept or an idea; it is a distinctive design for a building. As explained above, whether a tower actually could be constructed from this model is irrelevant. Defendants argue that the shape and form of Shine '99 are so rudimentary and standard that protecting it would be akin to protecting a particular geometric shape, such as "an ellipse, a pyramid, or an egg." (Def. Br. at 28) However, the AWCPA protects "the design of a building as embodied in any tangible medium of expression ... [including] the overall form as well as the arrangement and composition of spaces and elements in the design...." 17 U.S.C. § 101. Individual arguably "standard" elements of Shine '99, such as its twist or its setbacks, might not be worthy of protection, but the arrangement and composition of the various elements in the model do at least arguably constitute the "design of a building" under the AWCPA.

    31

    The same is true for Olympic Tower, which is a much more intricate and detailed design than Shine '99. The copyrighted Olympic Tower materials include two models of the tower, one of the building's internal supports and one of its external appearance. Both models show that the building twists on all four sides; comparing the models reveals that the internal diamond-shaped grid supporting the tower is reflected and repeated in the external "skin" on its facade — a design that Childs commented on during his evaluation of Shine's work. See Compl. Ex. B, pp. 2-6; Ex. C. Shine also copyrighted elevation sketches of the tower to display the building's core at different levels, see id. Ex. B, pp. 7-8, a photomontage of what the building might look like against the New York sky, see id. Ex. B. p. 1, as well as what appears to be a sketch of the undulating triangular grid design for the exterior, of the building, see id. Ex. B, p. 9. The detailed and specific materials Shine copyrighted for Olympic Tower certainly constitute the "design of a building," and qualify it as an architectural work under the AWCPA.

    32
    B. Originality
    33

    Defendants next claim that neither Shine '99 nor Olympic Tower is sufficiently original to warrant protection under the AWCPA. Using the House Committee Report on the AWCPA as their guide, defendants argue for a two-step analysis of the originality and functionality of an architectural work: First, the House Report noted, the work in question should be examined for the presence of original design elements. If such elements exist and are not functionally required, the Report concluded, then the work is protectable. (Def. Br. at 31) Following this framework, defendants argue that no single part of Shine's work is original; that any parts that might be original are functionally required to support its design and therefore unprotectable; and that the arrangement [610] of the various design elements featured in Shine's work is a compilation not meriting protection under existing law.

    34

    In this analysis, defendants fly high and fast over the large body of Supreme Court and Second Circuit case law on originality and copyright infringement, as well as the text of the AWCPA, which states that "the overall form as well as the arrangement and composition of spaces and elements in the design" of an architectural work may be the subject of a valid copyright. 17 U.S.C. § 101. First, defendants fail to acknowledge that plaintiff's "certificates of [copyright] registration constitute prima facie evidence of the validity not only of their copyrights, but also of the originality of [the] works." Boisson v. Banian, Ltd., 273 F.3d 262, 268 (2d Cir.2001); see also 17 U.S.C. § 410(c) (a copyright registration certificate, when issued within five years of the first publication of the work, is prima facie evidence of ownership of a valid copyright). It is also true, however, that originality is "the sine qua non of copyright," Feist, 499 U.S. at 345, 111 S.Ct. 1282, and if a work is not original, then it is not protectable. If a certain element within a work is not original, that element is not protectable "even if other elements, or the work as a whole, warrant protection." Boisson, 273 F.3d at 268.

    35

    Plaintiff need not clear a high bar in order for his architectural works to qualify as original:

    36

    In the copyright context, originality means the work was independently created by its author, and not copied from someone else's work. The level of originality and creativity that must be shown is minimal, only an "unmistakable dash of originality need be demonstrated, high standards of uniqueness in creativity are dispensed with."

    37

    Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 764-65 (2d Cir.1991) (quoting Weissmann v. Freeman, 868 F.2d 1313, 1321 (2d Cir.1989)); see also Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir.1988) (describing the requirement of originality as "little more than a prohibition of actual copying") (internal quotation marks omitted). Additionally, our Circuit has held that "a work may be copyrightable even though it is entirely a compilation of unprotectible elements." Knitwaves, 71 F.3d at 1003-04.

    38

    If the court followed defendants' suggestion and analyzed the elements of plaintiff's works separately, comparing only those elements that are copyrightable to those present in the designs for the Freedom Tower, as our Circuit noted, "we might have to decide that there can be no originality in a painting because all colors of paint have been used somewhere in the past." Id. at 1003 (internal quotation marks omitted); see also, e.g., Covington Indus., Inc. v. Nichols, No. 02 Civ. 8037, 2004 WL 784825, *3, 2004 U.S. Dist. LEXIS 6210, at *8-*11 (S.D.N.Y. Apr. 12, 2004) (holding that although neither vertical nor horizontal stripes, nor individual colors, nor the practice of basket weaving was original, the total concept of plaintiff's design for a colored, striped basket was original); Sunham Home Fashions, LLC v. Pem-America, Inc., No. 02 Civ. 6284, 2002 WL 31834477, *5, 2002 U.S. Dist. LEXIS 24185, *18-*19 (S.D.N.Y. Dec. 17, 2002) ("Although the idea of a plaid or floral pattern may not of its own be original, the patterns' sizes, shapes, arrangements and colors taken together are original and copyrightable.").

    39

    Following this analysis, both Shine '99 and Olympic Tower at least arguably are protectable and original. It is true that, as defendants' expert points out, twisting towers have been built before. Towers with diamond-windowed facades have been built before. Towers with support grids [611] similar to the one in Olympic Tower have been built before. Towers with setbacks have been built before. But defendants do not present any evidence that the particular combinations of design elements in either Shine '99 or Olympic Tower are unoriginal.[5] These works each have at least the mere "dash of originality" required for copyrightability, not to mention that they both have been copyrighted, and therefore are prima facie original.

    40

    Defendants argue also that any original aspect of Olympic Tower's facade is functionally required by the support grid utilized by Shine, and therefore unprotectable. See Meier Aff. ¶¶ 19-22, 39-40; Def. Br. at 33. However, Shine's expert disputes this contention. See Axley Decl. ¶ 10. Therefore, even if certain of the original design elements of Olympic Tower are dictated by functionality and therefore not copyrightable — a proposition for which there is no apparent support in the case law or the AWCPA — a material issue of fact on this matter remains for trial.

    41
    C. Infringement
    42

    To prove infringement,

    43

    [a] plaintiff must first show that his or her work was actually copied. Copying may be established either by direct evidence of copying, or by indirect evidence, including access to the copyrighted work, similarities that are probative of copying between the works, and expert testimony. If actual copying is established, a plaintiff must then show that the copying amounts to an improper appropriation by demonstrating that substantial similarity to protected material exists between the two works.

    44

    Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir.1992); see also Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 131 (2d Cir.2003).

    45
    1. Actual Copying
    46

    As explained above, unless the rare situation exists where plaintiff has direct proof that defendants copied his work, plaintiff may prove actual copying by showing that defendants had access to his copyrighted works, and that similarities that suggest copying exist between the protected works and the alleged infringing work. Cf. Castle Rock Entm't v. Carol Publ'g Group, 150 F.3d 132, 137 (2d Cir.1998) ("`[P]robative,' rather than `substantial' similarity is the correct term in referring to the plaintiff's initial burden of proving actual copying by indirect evidence. It is only after actual copying is established that one claiming infringement then proceeds to demonstrate that the copying was improper or unlawful by showing that the second work bears `substantial similarity' to protected expression in the earlier work.") (internal citations omitted); see also 4 Nimmer § 13.03[B].[6]

    47

    For the purposes of this motion, defendants concede that Childs had access to both Shine '99 and Olympic Tower when he evaluated them as part of the expert jury at the Yale School of Architecture in December 1999. (Def. Br. at 38) Therefore, [612] all that plaintiff must prove to show actual copying in this action is probative similarity between his works and the Freedom Tower. The court may consider expert testimony when assessing probative similarity, see Laureyssens, 964 F.2d at 140. Given the substantial disagreement between plaintiff's expert Axley and defendants' expert Meier on the alleged similarity between Olympic Tower and the Freedom Tower, compare Axley Decl. ¶¶ 21-24 with Meier Aff. ¶¶ 32-41, and that these experts' views are, at least to the court's untrained eye, plausible, there is at least an issue of material fact remaining for trial as to the probative similarity between those two works.

    48

    However, plaintiff's expert Axley does not comment on whether any similarity exists between Shine '99 and the Freedom Tower. According to plaintiff, "the shape of Freedom Tower is remarkably similar to the shape of Shine '99" because both towers have two straight parallel walls and two twisting walls. (Shine Decl. ¶ 18) Shine claims that the four setbacks on one side of Shine '99 were "intended as an alternative approach to the form of the twisting sides." (Id.) Whether they were so intended or not, these setbacks are a distinctive feature of the model which bear no resemblance to any feature of the Freedom Tower. Even imagining Shine '99 with four smooth sides, there are still no similarities between Shine '99 and the Freedom Tower that are probative of actual copying. Both towers twist as they rise, but as defendants' expert points out with ample evidence, see Meier Aff. Exs. D, G, the idea of a twisting tower with a rectangular base and parallel sides is by no means unique. There is no evidence to suggest that Childs would have thought of the idea of a twisting tower only by viewing Shine '99. Plaintiff's own expert could not find similarities between Shine '99 and the Freedom Tower substantial enough to warrant comment. Other than that Childs had access to the design, there is no evidence to suggest that defendants actually copied the form or shape of Shine '99. Therefore, no material issue of fact regarding the probative similarity of Shine '99 and the Freedom Tower remains for trial, and defendant's motion for summary judgment as to Shine '99 is granted.

    49
    2. Substantial Similarity
    50

    Because there is at least an issue of material fact as to whether defendants actually copied Shine's design for Olympic Tower, the court now must determine whether reasonable jurors could find that substantial similarity exists between Olympic Tower and the Freedom Tower. Our Circuit has not yet had occasion to compare the substantial similarity of a copyrighted architectural work such as Olympic Tower to an alleged infringing work, so it is not entirely clear which standard the court should use for the comparison.[7]

    51

    However, "total concept and feel" is the dominant standard used to evaluate substantial similarity between artistic works in our Circuit, and that standard is the most appropriate one in this case. See id. (noting that "[i]n recent years we have found it productive to assess claims of inexact-copy infringement by comparing the contested design's `total concept and overall feel' with that of the allegedly infringed work," and applying this test to compare two carpet designs); Boisson, 273 F.3d at 272 (using the "total concept and feel" test to compare to quilt designs and [613] noting that substantial similarity has "always" been guided by this test); Knitwaves, 71 F.3d at 1003 (applying the "total concept and feel" test to compare two different designs on sweaters); Laureyssens, 964 F.2d at 141 (using overall aesthetic appeal test to compare two foam rubber puzzles); see also Sturdza, 281 F.3d at 1296 (comparing two architectural works and holding that "[t]he substantial similarity determination requires comparison not only of the two works' individual elements in isolation, but also of their `overall look and feel.'" (quoting Boisson, 273 F.3d at 266)).

    52

    Defendants argue that court should apply the test set forth in Computer Assocs. Int'l, Inc. v. Altai, 982 F.2d 693 (2d Cir.1992) to compare the two complex architectural works here. In Altai, the court was asked to determine whether one computer program infringed another, and in doing so, it devised a new test for determining substantial similarity in that context. The Court described its test as follows:

    53

    In ascertaining substantial similarity under this approach, a court would first break down the allegedly infringed program into its constituent structural parts. Then, by examining each of these parts for such things as incorporated ideas, expression that is necessarily incidental to those ideas, and elements that are taken from the public domain, a court would be able to sift out all non-protectable material. Left with a kernel, or possibly kernels, of creative expression after following this process of elimination, the court's last step would be to compare this material with the structure of an allegedly infringing program. The result of this comparison will determine whether the protectable elements of the programs at issue are substantially similar so as to warrant a finding of infringement.

    54

    Id. at 706. However, as noted above in the discussion of originality, the AWCPA protects the "overall form as well as the arrangement and composition of spaces and elements in the design" of architectural works. 17 U.S.C. § 101. If the court were to follow the Altai analysis and separate out only those "kernels" of expression that would qualify as original, that, as our Circuit has held, "would result in almost nothing being copyrightable because original works broken down into their composite parts would usually be little more than basic unprotectible elements like letters, colors, and symbols." Boisson, 273 F.3d at 272.

    55

    Our Circuit noted recently that some commentators have worried that "`the total concept and feel' standard may `invite an abdication of analysis,' because `feel' can seem `a wholly amorphous referent.'" Tufenkian, 338 F.3d at 134 (quoting 4 Nimmer § 13.03[A][1][c]). But the Court added that the total concept and feel test was not "so incautious," because where it has been applied, courts have taken care to identify "precisely the particular aesthetic decisions — original to the plaintiff and copied by the defendant — that might be thought to make the designs similar in the aggregate." Id. The Court explained further that

    56

    while the infringement analysis must begin by dissecting the copyrighted work into its component parts in order to clarify precisely what is not original, infringement analysis is not simply a matter of ascertaining similarity between components viewed in isolation. For the defendant may infringe on the plaintiff's work not only through literal copying of a portion of it, but also by parroting properties that are apparent only when numerous aesthetic decisions embodied in the plaintiff's work of art — the excerpting, modifying, and arranging of public domain compositions, if [614] any, together with the development and representation of wholly new motifs and the use of texture and color, etc. — are considered in relation to one another. The court, confronted with an allegedly infringing work, must analyze the two works closely to figure out in what respects, if any, they are similar, and then determine whether these similarities are due to protected aesthetic expressions original to the allegedly infringed work, or whether the similarity is to something in the original that is free for the taking.

    57

    Id. at 134-35. Although this analysis was applied to carpet designs, it also is appropriate for architectural works, because the AWCPA protects the "overall form" of architectural designs in addition to their individual copyrightable elements.

    58

    The court has already found that, even though several of its component parts may not be original, the composite design of Olympic Tower is at least arguably unique and original. See supra Part III.B. Now the court must determine whether, examining the "total concept and feel" of both works, there is an issue of material fact as to whether the design of the Freedom Tower infringes on any of the original aesthetic expressions of the Olympic Tower.

    59

    This task presents the question of the point of view from which the "concept and feel" substantial similarity analysis should be conducted. Defendants argue that the analysis should be conducted with the aid of expert testimony, but they cite no Second Circuit authority for this proposition.[8] It seems odd that defendants would advocate such a test, because there is significant disagreement between the respective parties' two highly qualified experts regarding the substantial similarity of Olympic Tower and the Freedom Tower. According to the experts, many issues of material fact remain in dispute as to total concept and feel. If the court were to adopt defendants' suggestion and consider expert testimony in its analysis of substantial similarity, it would have no choice but to deny summary judgment on the issue.

    60

    However, the Second Circuit has long held that substantial similarity should be determined not with the help of or solely by experts in the relevant field, but from the perspective of the ordinary observer:

    61

    The plaintiff's legally protected interest is not, as such, his reputation ... but his interest in the potential financial returns from his [work] which derive from the lay public's approbation of his efforts. The question, therefore, is whether defendant took from plaintiff's works so much of what is pleasing to the ... lay [public] ... that defendant wrongfully appropriated something which belongs to the plaintiff.

    62

    Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir.1946) (footnotes omitted). Because the lay public's approbation usually is the foundation of returns that derive from a copyrighted work, an allegedly infringing work is considered substantially similar to a copyrighted work if "the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same." Folio Impressions, 937 F.2d at 765.

    63

    [615] Our Circuit refined the ordinary observer test in cases where certain aspects of the copyrighted work are taken directly from the public domain, and applied a "more discerning" ordinary observer test. "What must be shown is substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed compilation." Key Publ'ns, Inc. v. Chinatown Today Publ'g Enters., Inc., 945 F.2d 509, 514 (2d Cir.1991). However, this "more discerning" ordinary observer test must be applied in conjunction with the "total concept and feel" test, so as not to deny protection to works that have combined unoriginal elements in a unique and copyrightable fashion, as is at least arguably true here. Boisson, 273 F.3d at 272-73; see also Williams, 84 F.3d at 590 ("[A] scattershot approach cannot support a finding of substantial similarity because it fails to address the underlying issue: whether a lay observer would consider the works as a whole substantially similar to one another."). Noting the difficulty of applying the "more discerning ordinary observer" test to the "total concept and feel" evaluation, the Boisson Court counseled that with all of the above concepts in mind, the court's substantial similarity analysis ultimately should be guided by "common sense." 273 F.3d at 273.

    64

    With these principles in mind, the court finds that reasonable ordinary observers could disagree on whether substantial similarity exists between the Freedom Tower and Olympic Tower. Defendants present several photographic comparisons between the two structures in their Reply Memorandum. See Def. Reply Br. at 12, 18, 21, and 24. Although defendants offer these comparisons to point out what they claim are significant differences between the two towers, "[i]t has long been settled that `no plagiarist can excuse the wrong by showing how much of his work he did not pirate.'" Tufenkian, 338 F.3d at 132 (quoting Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir.1936) (L.Hand, J.)). Any lay observer examining the two towers side by side would notice that: (1) each tower has a form that tapers and twists as it rises, (2) each tower has an undulating, textured diamond shaped pattern covering its facade, and (3) the facade's diamond pattern continues to and concludes at the foot of each tower, where one or more half diamond shapes open up and allow for entry. These combination of these elements gives the two towers a similar "total concept and feel" that is immediately apparent even to an untrained judicial eye.

    65

    It is possible, even likely, that some ordinary observers might not find the two towers to be substantially similar because, as defendants note, there are differences between the Freedom Tower and Olympic Tower, including, inter alia, the number of sides of each tower that twist (the Freedom Tower's two versus Olympic Tower's four); the direction of each tower's twist (the Freedom Tower twists clockwise and Olympic Tower twists counterclockwise); the shape of each tower's ground floor (the Freedom Tower is a parallelogram and Olympic Tower is a square); and the various contrasting details of each tower's entrance and facade. See Def. Reply Br. at 11-24; see also Warner Bros., Inc. v. Am. Broad. Cos., 654 F.2d 204, 211 (2d Cir.1981) ("[W]hile `no plagiarist can excuse the wrong by showing how much of his work he did not pirate,' a defendant may legitimately avoid infringement by intentionally making sufficient changes in a work which would otherwise be regarded as substantially similar to that of the plaintiff's.") (quoting Sheldon, 81 F.2d at 56). However, it also is possible that a lay observer, applying the total concept and feel test, might find that the Freedom Tower's twisting shape and undulating diamond-shaped facade make it substantially similar to Olympic Tower, and therefore [616] an improper appropriation of plaintiff's copyrighted artistic expression.

    66

    Because reasonable jurors could disagree as to the substantial similarity between Olympic Tower and the Freedom Tower, defendants' motion for summary judgment as to plaintiff's claims regarding Olympic Tower is denied.

    67

    * * * * * *

    68

    For the foregoing reasons, defendants' motion for summary judgment regarding plaintiff's claim that the Freedom Tower infringed upon his copyrighted architectural work Shine '99 is granted. Defendants' motion for summary judgment regarding plaintiff's claim that the Freedom Tower infringed upon his copyrighted architectural work Olympic Tower is denied.

    69

    SO ORDERED.

    70

    [1] The Complaint states that plaintiff began designing Shine '99 on or about "October 1, 1997." However, because the rest of the Complaint refers only to events occurring in 1999, this reference to 1997 appears to be a typographical error.

    71

    [2] In addition to Childs and Shine's professor Cesar Pelli, the jury included Yale professor and urban planner Alexander Garvin, architecture writer and critic Paul Goldberger, and Robert A.M. Stern, dean of the Yale School of Architecture. (Shine Decl. ¶ 6)

    72

    [3] Because Childs is an alumnus of the Yale School of Architecture, he presumably received a copy of this issue of Retrospecta. However in his Answer, Childs denies that he ever saw a copy of the issue referenced by Shine in the Complaint. (Durschinger Aff. Ex. D, ¶ 12)

    73

    [4] See Glenn Collins, A Freedom Tower Restarted From Scratch, The New York Times, July 10, 2005.

    74

    [5] None of the designs defendants indicate as evidence of the unoriginality of Shine's works bear any significant resemblance to either Shine '99 or Olympic Tower. See Meier Aff. Exs. E.2, E.5, J, L.

    75

    [6] The phrase "probative similarity" is used to distinguish this stage of infringement analysis from "substantial similarity," which is examined only after actual copying is shown. The idea of probative similarity was first suggested in a law review article, and later adopted by our Circuit. See Alan Latman, "Probative Similarity" as Proof of Copying: Toward Dispelling Some Myths in Copyright Infringement, 90 Colum. L.Rev. 1187 (1990); Laureyssens, 964 F.2d at 140.

    76

    [7] In two recent cases where it analyzed the resemblance between copyrighted PGS works and structures, the Court generally discussed the similarities between the copyrighted materials and the alleged infringing works, but did not utilize a specific procedure for these comparisons. See Sparaco, 303 F.3d at 467-70; Attia, 201 F.3d at 56-58.

    77

    [8] Defendants note that the Altai Court granted discretion to district courts to allow expert testimony in evaluating the substantial similarity of computer programs. However, they cite no case where a court has actually utilized such testimony, either to examine computer programs or any other copyrighted material. See Def. Br. at 44 (citing Altai, 982 F.2d at 713). Indeed, the Altai Court noted that its decision to allow expert testimony on the substantial similarity of computer programs was not intended "to disturb the traditional role of lay observers in judging substantial similarity in copyright cases that involve the aesthetic arts, such as music, visual works or literature." Altai, 982 F.2d at 713-14.

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