[T]he shape of an industrial product may be aesthetically satisfying and

valuable, [but] the Committee’s intention is not to [protect it]. Unless the shape
of an automobile, airplane, ladies’ dress, food processor, television set, or any
other industrial product contains some element that, physically or conceptually,
can be identified as separable from the utilitarian aspects of the article, the
design would not be copyrighted under the bill.
H.R. Rep. No. 1476, 94th Cong., 2d Sess. 55 (emphasis added).
1 At oral argument on the motion for summary judgment, the district judge questioned
the Register’s
“fascination with th[e] familiar shape.” The judge asked counsel for the Copyright
Office: “If Picasso had
painted a round object on a canvas, would you say because it depicts a familiar subject —
namely, something
that’s round — it can’t be copyrighted?”
2 See 37 C.F.R. § 202.10(a): “[T]o be accepted as a pictorial, graphic, or sculptural work,
the work must
embody some creative authorship in its delineation or form.”
3 At oral argument on appeal, counsel for the Register clarified that he did not mean to
contend that “feel”
or “tactile qualities” had been ruled out, definitively, as a basis for registration. Rather,
his point was that the
tactile qualities of the KOOSH ball are “inextricably interwoven with the utilitarian
aspect of the article.” We
therefore disregard as excessive counsel’s statements on brief that the tactile aspect of a
work cannot, in any
case, contribute to the work’s copyrightability.
5.28 Subject Matter
OddzOn does not argue that the feel of the Koosh ball is physically separable from the
ball’s function. Is the ball’s tactility “conceptually… separable from the utilitarian
aspects of
th[e] article”? That is a question we do not answer given the limited nature of our review
of
registration decisions. It suffices to point out that there is a notable lack of agreement
among
courts and commentators on the very meaning of “conceptual separability.”
At oral argument, we asked OddzOn’s counsel how the Koosh ball would fare if we
applied to it the “conceptual separability” test employed by the panel majority in Brandir.
In that case, a divided Second Circuit panel held uncopyrightable a work originally
created as
a wire sculpture, and later modified for mass production as a bicycle rack. We set out the
exchange with counsel for OddzOn:
Court: How do you distinguish this case from the bicycle rack case, the
Brandir case, that is cited in [the district court’s] opinion…?
Counsel: Well, I say [Brandir] was wrong.
Court: But if we were to follow that case, then you lose?
Counsel: I think that’s correct.
We reserve appraisal of Brandir and competing tests of “conceptual separability” for a
case that obliges us to enter the “conceptual separability” fray. We are satisfied, however,
that the Copyright Office was not arbitrary in adhering to a line similar to the one taken
by
our sister circuit.
Was the Koosh ball correctly classified as “a useful article” and therefore properly held
subject to the separability test? The Copyright Office so treated the ball, and OddzOn did
not challenge the “utilitarian object” categorization during the application process or in
the
district court. In its brief on appeal, however, OddzOn added a footnote raising “a point
admittedly not raised heretofore.” OddzOn called our attention to Gay Toys, Inc. v.
Buddy
L. Corp., 703 F.2d 970 (6th Cir. 1983), a decision holding that a toy airplane is not a
“useful
article” and therefore is protectable, if minimally creative, without first passing a
separability
test. Because the classification question was not raised in the application proceedings,
that
question is not appropriately before us for review.
In conclusion, we again emphasize that we decide simply and only that the refusal of
the Copyright Office to register the Koosh ball, in the circumstances here presented, does
not constitute an abuse of discretion. We do not decide on the copyrightability of the
item….
Notes
1. Oddzon already had patent and trademark protection. Why was copyright protection
regarded as strategically important?
2. Consider the procedural difference between Masquerade and Oddzon. How did that
affect respective plaintiffs’ burdens?
3. Gay Toys received more consideration in Masquerade than in Oddzon. What
accounts for that?
4. Consider the Gay Toys rationale for copyrightability of toys set out in Masquerade.
Under that rationale, do dolls intended as toys forfeit protection if makeup can be
applied?
If their mouths are configured to accept bottles? If not, what would it take?
5. If the feel of Koosh is regarded as informational (as in Braille works), could the
tendrils
be useful for patentability but not copyrightability purposes? That aside, is the function
tied
to their appearance or to information they convey?
Copyright Basics 5.29
Problems
1. A tall box is traversed by small balls. Dropped in at the top, the balls make various
sounds before exiting at the bottom. Is the box copyrightable under §§ 102(5) or 102(7)?
2. A small block is shaped so as to soothe those who stroke it, e.g., with their thumb. Is it
copyrightable under § 102(5)? Could it be regarded as a graphic work in Braille?
British Leyland Motor Corp. Ltd. v.
Armstrong Patents Co. Ltd.
UK House of Lords
[1986] 2 WLR 400
Before Scarman, Edmund-Davies, Bridge of Harwich, Templeman and Griffiths.
Lord Templeman:
My Lords, this appeal is the culmination of dispute between the appellants Armstrong
and the respondents BL over the right to produce component parts required for the repair
of
a motor vehicle.
A car has an expectation of life of some 15 years subject to determination by careless
driving. A car is a collection of hundreds of components all of which must fit together.
From
the time that a car is driven out of the factory gates until the day that it is consigned to the
scrap heap, there is a risk that the car will be immobilised by the failure of a vital
component
part as a result of accident or wear and tear. BL manufacture the Marina car. The
component
parts of the Marina include two lengths of exhaust pipe, one length connecting the engine
to
the silencer and the other length running from the silencer to the rear of the car. The
exhaust
pipes need replacement at intervals which vary from six months to two years. Armstrong
manufacture replacement exhaust pipes for the Marina and in order to do so copy the
shape
and dimensions of the original. BL claim that the tentacles of copyright have now
reached out
to prevent Armstrong from manufacturing exhaust pipes for the Marina unless Armstrong
pay such royalty as BL think fit to require. Armstrong decline to pay a royalty. BL have
obtained an injunction which effectively prevents Armstrong from manufacturing
replacement
exhaust pipes for the Marina. If this injunction was rightly granted it follows that any
motorist who drives a BL car must buy his spare parts from BL at the prices fixed by BL
or
bear the burden of a royalty payable to BL for the privilege of buying his spare part from
somebody else. ….
In the course of designing the Marina and for the purpose of transmitting instructions
for the production of the Marina, BL employed draughtsmen who made engineering
drawings
from instructions given to them by the design engineers and showing the shape and
configuration of each part of the Marina. …. Armstrong have never seen BL’s
engineering
drawings and do not copy them directly. In order to provide a replacement exhaust pipe
Armstrong have taken a BL exhaust pipe and copied it so that the replacement will also
fit
the shape of the underside of the car. Armstrong’s exhaust pipe is a direct copy of BL’s
exhaust pipe and an indirect copy of BL’s engineering drawing.
BL’s claim to an injunction stems from the Copyright Act 1956. Section 3(1) provides:
In this Act “artistic work” means a work of any of the following descriptions,
that is to say, — (a) the following, irrespective of artistic quality, namely
paintings, sculptures, drawings, engravings and photographs;…
By sections 3(2) and 3(3): “Copyright shall subsist… in every original artistic work”
subject to certain conditions admittedly fulfilled with regard to BL’s engineering
drawings.