assignment for nov

7/27/2019 Assignment for Nov

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Assignment for Nov. 21, 2012For both classes:

Intellectual Property Code, RA 8293,

Sections 171 and 172Cases:1. Santos v. McCullough Printing Company, 12 SCRA 324

2. Filipino Society of Composers v. Tan, G.R. No. L-36402, March 16, 1987

3. Bayanihan vs. BMG, G.R. No. 166337, March 7, 2005

4. Kho vs. CA, 379 SCRA 410

5. Unilever vs. Procter & Gamble, G.R. No. 119280, Aug. 8, 2006

Idea-Expression Dichotomy1. Baker v. Selden, 101 U.S. 99LINK

2. Feist Publications v. Rural Telephone, 499 U.S. 340 LINK

Works not subject to Protection

Section 175 & 176Cases:

1. Morrissey v. Proctor & Gamble, 379 F.2d 367LINK

2. Brandir International v. Cascade Pacific Lumber, 834 F.2d 1142LINK

3. Pearl & Dean vs. Shoemart, 409 SCRA 231

4. Unilever vs. CA, 498 SCRA 334

5. Joaquin vs. Drilon, G.R. No. 108946, January 28, 1999
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U.S. Supreme Court

BAKER v. SELDEN, 101 U.S. 99 (1879)

101 U.S. 99101 U.S. 99

BAKER

v.

SELDEN.

October Term, 1879

APPEAL from the Circuit Court of the United States for the Southern District of Ohio.

The facts are stated in the opinion of the court.

Mr. Alphonso Taft and Mr. H. P. Lloyd for the appellant.

Mr. C. W. Moulton and Mr. M. I. Southard for the appellee.

MR. JUSTICE BRADLEY delivered the opinion of the court.

Charles Selden, the testator of the complainant in this case, in the year 1859 took the requisite steps for

obtaining the copyright [101 U.S. 99, 100] of a book, entitled 'Selden's Condensed Ledger, or Book-

keeping Simplified,' the object of which was to exhibit and explain a peculiar system of book- keeping. In

1860 and 1861, he took the copyright of several other books, containing additions to and improvements

upon the said system. The bill of complaint was filed against the defendant, Baker, for an alleged

infringement of these copyrights. The latter, in his answer, denied that Selden was the author or designer

of the books, and denied the infringement charged, and contends on the argument that the matter alleged

to be infringed is not a lawful subject of copyright.

The parties went into proofs, and the various books of the complainant, as well as those sold and used by

the defendant, were exhibited before the examiner, and witnesses were examined to both sides. A decree

was rendered for the complainant, and the defendant appealed.

The book or series of books of which the complainant claims the copyright consists of an introductory

essay explaining the system of book- keeping referred to, to which are annexed certain forms or banks,

consisting of ruled lines, and headings, illustrating the system and showing how it is to be used and

carried out in practice. This system effects the same results as book-keeping by double entry; but, by a

peculiar arrangement of columns and headings, presents the entire operation, of a day, a week, or a

month, on a single page, or on two pages facing each other, in an account-book. The defendant uses a

similar plan so far as results are concerned; but makes a different arrangement of the columns, and uses

different headings. If the complainant's testator had the exclusive right to the use of the system explained

in his book, it would be difficult to contend that the defendant does not infringe it, notwithstanding the

difference in his form of arrangement; but if it be assumed that the system is open to public use, it seems

to be equally difficult to contend that the books made and sold by the defendant are a violation of the
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copyright of the complainant's book considered merely as a book explanatory of the system. Where the

truths of a science or the methods of an art are the common property of the whole world, any author has

the right to express the one, or explain and use the other, in [101 U.S. 99, 101] his own way. As an author,

Selden explained the system in a particular way. It may be conceded that Baker makes and uses account-

books arranged on substantially the same system; but the proof fails to show that he has violated the

copyright of Selden's book, regarding the latter merely as an explanatory work; or that he has infringed

Selden's right in any way, unless the latter became entitled to an exclusive right in the system.

The evidence of the complainant is principally directed to the object of showing that Baker uses the same

system as that which is explained and illustrated in Selden's books. It becomes important, therefore, to

determine whether, in obtaining the copyright of his books, he secured the exclusive right to the use of the

system or method of book-keeping which the said books are intended to illustrate and explain. It is

contended that he has secured such exclusive right, because no one can use the system without using

substantially the same ruled lines and headings which he was appended to his books in illustration of it.

In other words, it is contended that the ruled lines and headings, given to illustrate the system, are a part

of the book, and, as such, are secured by the copyright; and that no one can make or use similar ruledlines and headings, or ruled lines and headings made and arranged on substantially the same system,

without violating the copyright. And this is really the question to be decided in this case. Stated in another

form, the question is, whether the exclusive property in a system of book-keeping can be claimed, under

the law or copyright, by means of a book in which that system is explained? The complainant's bill, and

the case made under it, are based on the hypothesis that it can be.

It cannot be pretended, and indeed it is not seriously urged, that the ruled lines of the complainant's

account-book can be claimed under any special class of objects, other than books, named in the law of

copyright existing in 1859. The law then in force was that of 1831, and specified only books, maps, charts,

musical compositions, prints, and engravings. An account-book, consisting of ruled lines and blank

columns, cannot be called by any of these names unless by that of a book.

There is no doubt that a work on the subject of book-keeping, [101 U.S. 99, 102] though only explanatory

of well-known systems, may be the subject of a copyright; but, then, it is claimed only as a book. Such a

book may be explanatory either of old systems, or of an entirely new system; and, considered as a book, as

the work of an author, conveying information on the subject of book-keeping, and containing detailed

explanations of the art, it may be a very valuable acquisition to the practical knowledge of the community.

But there is a clear distinction between the book, as such, and the art which it is intended to illustrate. The

mere statement of the proposition is so evident, that it requires hardly any argument to support it. The

same distinction may be predicated of every other art as well as that of book-keeping. A treatise on the

composition and use of medicines, be they old or new; on the construction and use of ploughs, or watches,or churns; or on the mixture and application of colors for painting or dyeing; or on the mode of drawing

lines to produce the effect of perspective,- would be the subject of copyright; but no one would contend

that the copyright of the treatise would give the exclusive right to the art or manufacture described

therein. The copyright of the book, if not pirated from other works, would be valid without regard to the

novelty, or want of novelty, of its subject-matter. The novelty of the art or thing described or explained has

nothing to do with the validity of the copyright. To give to the author of the book an exclusive property in


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the art described therein, when no examination of its novelty has ever been officially made, would be a

surprise and a fraud upon the public. That is the province of letters-patent, not of copyright. The claim to

an invention or discovery of an art or manufacture must be subjected to the examination of the Patent

Office before an exclusive right therein can be obtained; and it can only be secured by a patent from the

government.

The difference between the two things, letters-patent and copyright, may be illustrated by reference to the

subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great value in

the healing art. If the discoverer writes and publishes a book on the subject ( as regular physicians

generally do), he gains no exclusive right to the manufacture and sale of the medicine; he gives that to

the [101 U.S. 99, 103] public. If he desires to acquire such exclusive right, he must obtain a patent for the

mixture as a new art, manufacture, or composition of matter. He may copyright his book, if he pleases;

but that only secures to him the exclusive right of printing and publishing his book. So of all other

inventions or discoveries.

The copyright of a book on perspective, no matter how many drawings and illustrations it may contain,

gives no exclusive right to the modes of drawing described, though they may never have been known or

used before. By publishing the book, without getting a patent for the art, the latter is given to the public.

The fact that the art described in the book by illustrations of lines and figures which are reproduced in

practice in the application of the art, makes no difference. Those illustrations are the mere language

employed by the author to convey his ideas more clearly. Had he used words of description instead of

diagrams (which merely stand in the place of words), there could not be the slightest doubt that others,

applying the art to practical use, might lawfully draw the lines and diagrams which were in the author's

mind, and which he thus described by words in his book.

The copyright of a work on mathematical science cannot give to the author an exclusive right to the

methods of operation which he propounds, or to the diagrams which he employs to explain them, so as to

prevent an engineer from using them whenever occasion requires. The very object of publishing a book on

science or the useful arts is to communicate to the world the useful knowledge which it contains. But this

object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the

book. And where the art it teaches cannot be used without employing the methods and diagrams used to

illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as

necessary incidents to the art, and given therewith to the public; not given for the purpose of publication

in other works explanatory of the art, but for the purpose of practical application.

Of course, these observations are not intended to apply to ornamental designs, or pictorial illustrations

addressed to the taste. Of these it may be said, that their form is their essence, [101 U.S. 99, 104] andtheir object, the production of pleasure in their contemplation. This is their final end. They are as much

the product of genius and the result of composition, as are the lines of the poet or the historian's period.

On the other hand, the teachings of science and the rules and methods of useful art have their final end in

application and use; and this application and use are what the public derive from the publication of a book

which teaches them. But as embodied and taught in a literary composition or book, their essence consists

only in their statement. This alone is what is secured by the copyright. The use by another of the same


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methods of statement, whether in words or illustrations, in a book published for teaching the art, would

undoubtedly be an infringement of the copyright.

Recurring to the case before us, we observe that Charles Selden, by his books, explained and described a

peculiar system of book-keeping, and illustrated his method by means of ruled lines and blank columns,

with proper headings on a page, or on successive pages. Now, whilst no one has a right to print or publishhis book, or any material part thereof, as a book intended to convey instruction in the art, any person may

practise and use the art itself which he has described and illustrated therein. The use of the art is a totally

different thing from a publication of the book explaining it. The copyright of a book on book-keeping

cannot secure the exclusive right to make, sell, and use account-books prepared upon the plan set forth in

such book. Whether the art might or might not have been patented, is a question which is not before us. It

was not patented, and is open and free to the use of the public. And, of course, in using the art, the ruled

lines and headings of accounts must necessarily be used as incident to it.

The plausibility of the claim put forward by the complainant in this case arises from a confusion of ideas

produced by the peculiar nature of the art described in the books which have been made the subject of

copyright. In describing the art, the illustrations and diagrams employed happen to correspond more

closely than usual with the actual work performed by the operator who uses the art. Those illustrations

and diagrams consist of ruled lines and headings of accounts; and [101 U.S. 99, 105] it is similar ruled

lines and headings of accounts which, in the application of the art, the book-keeper makes with his pen, or

the stationer with his press; whilst in most other cases the diagrams and illustrations can only be

represented in concrete forms of wood, metal, stone, or some other physical embodiment. But the

principle is the same in all. The description of the art in a book, though entitled to the benefit of copyright,

lays no foundation for an exclusive claim to the art itself. The object of the one is explanation; the object of

the other is use. The former may be secured by copyright. The latter can only be secured, if it can be

secured at all, by letters-patent.

The remarks of Mr. Justice Thompson in the Circuit Court in Clayton v. Stone & Hall (2 Paine, 392), in

which copyright was claimed in a daily price-current, are apposite and instructive. He says: 'In

determining the true construction to be given to the act of Congress, it is proper to look at the

Constitution of the United States, to aid us in ascertaining the nature of the property intended to be

protected. 'Congress shall have power to promote the progress of science and useful arts, by securing for

limited times to authors and inventors the exclusive right to their writings and discoveries.' The act in

question was passed in execution of the power here given, and the object, therefore, was the promotion of

science; and it would certainly be a pretty extraordinary view of the sciences to consider a daily or weekly

publication of the state of the market as falling within any class of them. They are of a more fixed,

permanent, and durable character. The term 'science' cannot, with any propriety, by applied to a work ofso fluctuating and fugitive a form as that of a newspaper or price-current, the subject-matter of which is

daily changing, and is of mere temporary use. Although great praise may be due to the plaintiffs for their

industry and enterprise in publishing this paper, yet the law does not contemplate their being rewarded in

this way: it must seek patronage and protection from its utility to the public, and not a work of science.

The title of the act of Congress is, 'for the encouragement of learning,' and was not intended for the

encouragement of mere industry, unconnected with learning and the sciences. . . . We are, accordingly, of


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opinion that the paper in question is not [101 U.S. 99, 106] a book the copyright to which can be secured

under the act of Congress.'

The case of Cobbett v. Woodward (Law Rep. 14 Eq. 407) was a claim to copyright in a catalogue of

furniture which the publisher had on sale in his establishment, illustrated with many drawings of

furniture and decorations. The defendants, being dealers in the same business, published a similar book,and copied many of the plaintiff's drawings, though it was shown that they had for sale the articles

represented thereby.

The court held that these drawings were not subjects of copyright. Lord Romilly, M. R., said: 'This is a

mere advertisement for the sale of particular articles which any one might imitate, and any one might

advertise for sale. If a man not being a vendor of any of the articles in question were to publish a work for

the purpose of informing the public of what was the most convenient species of articles for household

furniture, or the most graceful species of decorations for articles of home furniture, what they ought to

cost, and where they might be bought, and were to illustrate his work with designs of each article he

described,-such a work as this could not be pirated with impunity, and the attempt to do so would be

stopped by the injunction of the Court of Chancery; yet if it were done with no such object, but solely for

the purpose of advertising particular articles for sale, and promoting the private trade of the publisher by

the sale of articles which any other person might sell as well as the first advertiser, and if in fact it

contained little more than an illustrated inventory of the contents of a warehouse, I know of no law which,

while it would not prevent the second advertiser from selling the same articles, would prevent him from

using the same advertisement; provided he did not in such advertisement by any device suggest that he

was selling the works and designs of the first advertiser.'

Another case, that of Page v. Wisden (20 L. T. N. S. 435), which came before Vice-Chancellor Malins in

1869, has some resemblance to the present. There a copyright was claimed in a cricket scoring-shett, and

the Vice- Chancellor held that it was not a fit subject for copyright, partly because it was not new, but also

because 'to say that a particular [101 U.S. 99, 107] mode of ruling a book constituted an object for a

copyright is absurd.'

These cases, if not precisely in point, come near to the matter in hand, and, in our view, corroborate the

general proposition which we have laid down.

In Drury v. Ewing (1 Bond, 540), which is much relied on by the complainant, a copyright was claimed in

a chart of patterns for cutting dresses and basques for ladies, and coats, jackets, &c., for boys. It is obvious

that such designs could only be printed and published for information, and not for use in themselves.

Their practical use could only be exemplified in cloth on the tailor's board and under his shears; in other

words, by the application of a mechanical operation to the cutting of cloth in certain patterns and forms.

Surely the exclusive right to this practical use was not reserved to the publisher by his copyright of the

chart. Without undertaking to say whether we should or should not concur in the decision in that case, we

think it cannot control the present.


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The conclusion to which we have come is, that blank account-books are not the subject of copyright; and

that the mere copyright of Selden's book did not confer upon him the exclusive right to make and use

account-books, ruled and arranged as designated by him and described and illustrated in said book.

The decree of the Circuit Court must be reversed, and the cause remanded with instructions to dismiss the

complainant's bill; and it is

So ordered

Republic of the PhilippinesSUPREME COURT

Manila

EN BANC

G.R. No. L-19439 October 31, 1964

MAURO MALANG SANTOS, plaintiff-appellant,vs.MCCULLOUGH PRINTING COMPANY, defendant-appellee.

Taada Teehankee & Carreon for plaintiff-appellant.Esposo & Usison for defendant-appellee.

PAREDES, J .:

This is an action for damages based on the provisions of Articles 721 and 722 of the Civil Code ofthe Philippines, allegedly on the unauthorized use, adoption and appropriation by the defendantcompany of plaintiff's intellectual creation or artistic design for a Christmas Card. The design depicts"a Philippine rural Christmas time scene consisting of a woman and a child in a nipa hut adornedwith a star-shaped lantern and a man astride a carabao, beside a tree, underneath which appearsthe plaintiff's pen name, Malang."

The complaint alleges that plaintiff Mauro Malang Santos designed for former Ambassador FelinoNeri, for his personal Christmas Card greetings for the year 1959, the artistic motif in question. Thefollowing year the defendant McCullough Printing Company, without the knowledge and authority ofplaintiff, displayed the very design in its album of Christmas cards and offered it for sale, for a price.For such unauthorized act of defendant, plaintiff suffered moral damages to the tune of P16,000.00,because it has placed plaintiff's professional integrity and ethics under serious question and causedhim grave embarrassment before Ambassador Neri. He further prayed for the additional sum ofP3,000.00 by way of attorney's fee.


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Defendant in answer to the complaint, after some denials and admissions, moved for a dismissal ofthe action claiming that

(1) The design claimed does not contain a clear notice that it belonged to him and that heprohibited its use by others;

(2) The design in question has been published but does not contain a notice of copyright, asin fact it had never been copyrighted by the plaintiff, for which reason this action is barred bythe Copyright Law;

(3) The complaint does not state a cause of action.

The documentary evidence submitted were the Christmas cards, as originally designed by plaintiff,the design as printed for Ambassador Neri, and the subsequent reprints ordered by other parties.The case was submitted an a "Stipulation of Fact" the pertinent portions of which are hereunderreproduced:

1. That the plaintiff was the artist who created the design shown in Exhibit A, ...

2. That the design carries the pen name of plaintiff, MALANG, on its face ... and indicated inExhibit A, ...

3. That said design was created by plaintiff in the latter part of 1959 for the personal use offormer Ambassador Felino Neri; ...

4. That former Ambassador Neri had 800 such cards ... printed by the defendant company in1959, ... which he distributed to his friends in December, 1959;

5. That defendant company utilized plaintiff's design in the year 1960 in its album ofChristmas card samples displayed to its customers ... .

6. That the Sampaguita Pictures, Inc., placed an order with defendant company for 700 ofsaid cards ... while Raul Urra & Co. ordered 200 ..., which cards were sent out by them totheir respective correspondent, clients and friends during the Christmas season of 1960;

7. That defendant company's use of plaintiff's design was without knowledge, authority orconsent of plaintiff;

8. That said design has not been copyrighted;

9. That plaintiff is an artist of established name, good-will and reputation. ... .

Upon the basis of the facts stipulated, the lower court rendered judgment on December 1, 1961, thepertinent portions of which are recited below:

As a general proposition, there can be no dispute that the artist acquires ownership of theproduct of his art. At the time of its creation, he has the absolute dominion over it. To helpthe author protect his rights the copyright law was enacted.

In intellectual creations, a distinction must be made between two classes of property rights;the fact of authorship and the right to publish and/or distribute copies of the creation. With


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regard to the first, i.e. the fact of authorship, the artist cannot be divested of the same. Inother words, he may sell the right to print hundred of his work yet the purchaser of said rightcan never be the author of the creation.

It is the second right, i.e., the right to publish, republish, multiply and/or distribute copies ofthe intellectual creation which the state, through the enactment of the copyright law, seeks to

protect. The author or his assigns or heirs may have the work copyrighted and once this islegally accomplished any infringement of the copyright will render the infringer liable to theowner of the copyright.

xxx xxx xxx

The plaintiff in this case did not choose to protect his intellectual creation by a copyright. Thefact that the design was used in the Christmas card of Ambassador Neri who distributedeight hundred copies thereof among his friends during the Christmas season of 1959, showsthat the, same was published.

Unless satisfactorily explained a delay in applying for a copyright, of more than thirty days

from the date of its publication, converts the property to one of public domain.

Since the name of the author appears in each of the alleged infringing copies of theintellectual creation, the defendant may not be said to have pirated the work nor guilty ofplagiarism Consequently, the complaint does not state a cause of action against thedefendant.

xxx xxx ;xxx

WHEREFORE, the Court dismisses the complaint without pronouncement as to costs.

In his appeal to this Court, plaintiff-appellant pointed five (5) errors allegedly committed by the trial

court, all of which bring to the fore, the following propositions: (1) whether plaintiff is entitled toprotection, notwithstanding the, fact that he has not copyrighted his design; (2) whether thepublication is limited, so as to prohibit its use by others, or it is general publication, and (3) whetherthe provisions of the Civil Code or the Copyright Law should apply in the case. We will undertake acollective discussion of these propositions.

Under the established facts, We find that plaintiff is not entitled to a protection, the provision of theCivil Code, notwithstanding. Paragraph 33 of Patent Office Administrative Order No. 3 (as amendeddated September 18, 1947) entitled "Rules of Practice in the Philippines Patent Office relating to theRegistration of Copyright Claims" promulgated pursuant to Republic Act 165, provides, amongothers, that an intellectual creation should be copyrighted thirty (30) days after its publication, ifmade in Manila, or within sixty (60) day's if made elsewhere, failure of which renders such creationpublic property. In the case at bar, even as of this moment, there is no copyright for the design in

question. We are not also prepared to accept the contention of appellant that the publication of thedesign was a limited one, or that there was an understanding that only Ambassador Neri should,have absolute right to use the same. In the first place, if such were the condition then AmbassadorNeri would be the aggrieved party, and not the appellant. In the second place, if there was such alimited publication or prohibition, the same was not shown on the face of the design. When thepurpose is a limited publication, but the effect is general publication, irrevocable rights thereuponbecome vested in the public, in consequence of which enforcement of the restriction becomesimpossible (Nutt vs. National Institute, 31 F [2d] 236). It has been held that the effect of offering forsale a dress, for example manufactured in accordance with an original design which is not protected


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by either a copyright or a patent, is to divest the owner of his common law rights therein by virtue ofthe publication of a 'copy' and thereafter anyone is free to copy the design or the dress (FashionOriginators Guild of America v. Federal Trade Commission, 114 F [2d] 80). When Ambassador Neridistributed 800 copies of the design in controversy, the plaintiff lost control of his design and thenecessary implication was that there had been a general publication, there having been no showingof a clear indication that a limited publication was intended. The author of a literary composition has

a light to the first publication thereof. He has a right to determine whether it shall be published at all,and if published, when, where, by whom, and in what form. This exclusive right is confined to the firstpublication. When once published, it is dedicated to the public, and the author loses the exclusiveright to control subsequent publication by others, unless the work is placed under the protection ofthe copyright law. (See II Tolentino's Comments on the Civil Code, p. 433, citing Wright v. Eisle 83N.Y. Supp. 887.)

CONFORMABLY WITH ALL THE FOREGOING, We find that the errors assigned have not beencommitted by the lower court. The decision appealed from, therefore, should be, as it is herebyaffirmed. Costs taxed against plaintiff-appellant.

Bengzon, C.J., Bautista Angelo, Concepcion, Reyes, J.B.L., Barrera, Dizon, Makalintal, Bengzon, J.P., and Zaldivar JJ., concur.Regala, J., took no part.

Republic of the PhilippinesSUPREME COURT

Manila

G.R. No. L-36402 March 16, 1987

FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC., plaintiff-appellant,vs.BENJAMIN TAN, defendant-appellee.

Lichauco, Picazo & Agcaoili Law Office for plaintiff-appellant.

Ramon A. Nieves for defendant-appellee.

PARAS, J .:

An appeal was made to the Court of Appeals docketed as CA-G.R. No. 46373-R * entitled FilipinoSociety of Composers, Authors, Publishers, Inc., Plaintiff-Appellant v. Benjamin Tan, Defendant-

Appellee, from the decision of the Court of First Instance of Manila, Branch VII in Civil Case No.71222 **"Filipino Society of Composers, Authors and Publishers, Inc., Plaintiff v. Benjamin Tan,Defendant,"which had dismissed plaintiffs' complaint without special pronouncement as to costs.

The Court of Appeals, finding that the case involves pure questions of law, certified the same to theSupreme Court for final determination (Resolution, CA-G.R. No. 46373-R, Rollo, p. 36; Resolution ofthe Supreme Court of February 16, 1973 in L-36402, Rollo, p. 38).

The undisputed facts of this case are as follows:


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Plaintiff-appellant is a non-profit association of authors, composers and publishers duly organizedunder the Corporation Law of the Philippines and registered with the Securities and ExchangeCommission. Said association is the owner of certain musical compositions among which are thesongs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "TheNearness Of You."

On the other hand, defendant-appellee is the operator of a restaurant known as "Alex SodaFoundation and Restaurant" where a combo with professional singers, hired to play and sing musicalcompositions to entertain and amuse customers therein, were playing and singing the above-mentioned compositions without any license or permission from the appellant to play or sing thesame. Accordingly, appellant demanded from the appellee payment of the necessary license fee forthe playing and singing of aforesaid compositions but the demand was ignored.

Hence, on November 7, 1967, appellant filed a complaint with the lower court for infringement ofcopyright against defendant-appellee for allowing the playing in defendant-appellee's restaurant ofsaid songs copyrighted in the name of the former.

Defendant-appellee, in his answer, countered that the complaint states no cause of action. While not

denying the playing of said copyrighted compositions in his establishment, appellee maintains thatthe mere singing and playing of songs and popular tunes even if they are copyrighted do notconstitute an infringement (Record on Appeal, p. 11; Resolution, CA-G.R. NO. 46373-R, Rollo, pp.32-36) under the provisions of Section 3 of the Copyright Law (Act 3134 of the PhilippineLegislature).

The lower court, finding for the defendant, dismissed the complaint (Record on Appeal, p. 25).

Plaintiff appealed to the Court of Appeals which as already stated certified the case to the SupremeCourt for adjudication on the legal question involved. (Resolution, Court of Appeals, Rollo, p. 36;Resolution of the Supreme Court of February 18, 1973, Rollo, p. 38).

In its brief in the Court of Appeals, appellant raised the following Assignment of Errors:

I

THE LOWER COURT ERRED IN HOLDING THAT THE MUSICAL COMPOSITIONS OF THEAPPELLANT WERE IN THE NATURE OF PUBLIC PROPERTY WHEN THEY WERECOPYRIGHTED OR REGISTERED.

II

THE LOWER COURT ERRED IN HOLDING THAT THE MUSICAL COMPOSITIONS OF THEAPPELLANT WERE PLAYED AND SUNG IN THE SODA FOUNTAIN AND RESTAURANT OF THEAPPELLEE BY INDEPENDENT CONTRACTORS AND ONLY UPON THE REQUEST OFCUSTOMERS.

III

THE LOWER COURT ERRED IN HOLDING THAT THE PLAYING AND SINGING OFCOPYRIGHTED MUSICAL COMPOSITIONS IN THE SODA FOUNTAIN AND RESTAURANT OFTHE APPELLEE ARE NOT PUBLIC PERFORMANCES FOR PROFIT OF THE SAIDCOMPOSITIONS WITHIN THE MEANING AND CONTEMPLATION OF THE COPYRIGHT LAW.


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IV

THE LOWER COURT ERRED IN NOT HOLDING THAT THE APPELLEE IS LIABLE TO THEAPPELLANT FOR FOUR (4) SEPARATE INFRINGEMENTS. (Brief for Appellant, pp. A and B).

The petition is devoid of merit.

The principal issues in this case are whether or not the playing and signing of musical compositionswhich have been copyrighted under the provisions of the Copyright Law (Act 3134) inside theestablishment of the defendant-appellee constitute a public performance for profit within the meaningand contemplation of the Copyright Law of the Philippines; and assuming that there were indeedpublic performances for profit, whether or not appellee can be held liable therefor.

Appellant anchors its claim on Section 3(c) of the Copyright Law which provides:

SEC. 3. The proprietor of a copyright or his heirs or assigns shall have the exclusiveright:

xxx xxx xxx

(c) To exhibit, perform, represent, produce, or reproduce the copyrighted work in anymanner or by any method whatever for profit or otherwise; if not reproduced in copiesfor sale, to sell any manuscripts or any record whatsoever thereof;

xxx xxx xxx

It maintains that playing or singing a musical composition is universally accepted as performing themusical composition and that playing and singing of copyrighted music in the soda fountain andrestaurant of the appellee for the entertainment of the customers although the latter do not pay forthe music but only for the food and drink constitute performance for profit under the Copyright Law

(Brief for the Appellant, pp. 19-25).

We concede that indeed there were "public performances for profit. "

The word "perform" as used in the Act has been applied to "One who plays a musical compositionon a piano, thereby producing in the air sound waves which are heard as music ... and if theinstrument he plays on is a piano plus a broadcasting apparatus, so that waves are thrown out, notonly upon the air, but upon the other, then also he is performing the musical composition." (Buck, etal. v. Duncan, et al.; Same Jewell La Salle Realty Co., 32F. 2d. Series 367).

In relation thereto, it has been held that "The playing of music in dine and dance establishmentwhich was paid for by the public in purchases of food and drink constituted "performance for profit"

within a Copyright Law." (Buck, et al. v. Russon No. 4489 25 F. Supp. 317). Thus, it has beenexplained that while it is possible in such establishments for the patrons to purchase their food anddrinks and at the same time dance to the music of the orchestra, the music is furnished and used bythe orchestra for the purpose of inducing the public to patronize the establishment and pay for theentertainment in the purchase of food and drinks. The defendant conducts his place of business forprofit, and it is public; and the music is performed for profit (Ibid, p. 319). In a similar case, the Courtruled that "The Performance in a restaurant or hotel dining room, by persons employed by theproprietor, of a copyrighted musical composition, for the entertainment of patrons, without charge foradmission to hear it, infringes the exclusive right of the owner of the copyright." (Herbert v. Shanley


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Co.; John Church Co. v. Hillard Hotel Co., et al., 242 U.S. 590-591). In delivering the opinion of theCourt in said two cases, Justice Holmes elaborated thus:

If the rights under the copyright are infringed only by a performance where money istaken at the door, they are very imperfectly protected. Performances not different inkind from those of the defendants could be given that might compete with and even

destroy the success of the monopoly that the law intends the plaintiffs to have. It isenough to say that there is no need to construe the statute so narrowly. Thedefendants' performances are not eleemosynary. They are part of a total for whichthe public pays, and the fact that the price of the whole is attributed to a particularitem which those present are expected to order is not important. It is true that themusic is not the sole object, but neither is the food, which probably could be gotcheaper elsewhere. The object is a repast in surroundings that to people havinglimited power of conversation or disliking the rival noise, give a luxurious pleasure notto be had from eating a silent meal. If music did not pay, it would be given up. If itpays, it pays out of the public's pocket. Whether it pays or not, the purpose ofemploying it is profit, and that is enough. (Ibid., p. 594).

In the case at bar, it is admitted that the patrons of the restaurant in question pay only for the foodand drinks and apparently not for listening to the music. As found by the trial court, the musicprovided is for the purpose of entertaining and amusing the customers in order to make theestablishment more attractive and desirable (Record on Appeal, p. 21). It will be noted that for theplaying and singing the musical compositions involved, the combo was paid as independentcontractors by the appellant (Record on Appeal, p. 24). It is therefore obvious that the expensesentailed thereby are added to the overhead of the restaurant which are either eventually charged inthe price of the food and drinks or to the overall total of additional income produced by the biggervolume of business which the entertainment was programmed to attract. Consequently, it is beyondquestion that the playing and singing of the combo in defendant-appellee's restaurant constitutedperformance for profit contemplated by the Copyright Law. (Act 3134 amended by P.D. No. 49, asamended).

Nevertheless, appellee cannot be said to have infringed upon the Copyright Law. Appellee'sallegation that the composers of the contested musical compositions waivedtheir right in favor of thegeneral public when they allowed their intellectual creations to become property of the public domainbefore applying for the corresponding copyrights for the same (Brief for Defendant-Appellee, pp. 14-15) is correct.

The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative Order No. 3 (asamended, dated September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Officerelating to the Registration of Copyright Claims' promulgated pursuant to Republic Act 165, providesamong other things that an intellectual creation should be copyrighted thirty (30) days after itspublication, if made in Manila, or within the (60) days if made elsewhere, failure of which renderssuch creation public property." (Santos v. McCullough Printing Company, 12 SCRA 324-325 [1964].Indeed, if the general public has made use of the object sought to be copyrighted for thirty (30) daysprior to the copyright application the law deems the object to have been donated to the publicdomain and the same can no longer be copyrighted.

A careful study of the records reveals that the song "Dahil Sa Iyo" which was registered on April 20,1956 (Brief for Appellant, p. 10) became popular in radios, juke boxes, etc. long before registration(TSN, May 28, 1968, pp. 3-5; 25) while the song "The Nearness Of You" registered on January 14,1955 (Brief for Appellant, p. 10) had become popular twenty five (25) years prior to 1968, (the yearof the hearing) or from 1943 (TSN, May 28, 1968, p. 27) and the songs "Sapagkat Ikaw Ay Akin" and


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"Sapagkat Kami Ay Tao Lamang" both registered on July 10, 1966, appear to have been known andsang by the witnesses as early as 1965 or three years before the hearing in 1968. The testimoniesof the witnesses at the hearing of this case on this subject were unrebutted by the appellant.(Ibid, pp. 28; 29 and 30).

Under the circumstances, it is clear that the musical compositions in question had long become

public property, and are therefore beyond the protection of the Copyright Law.

PREMISES CONSIDERED, the appealed decision of the Court of First Instance of Manila in CivilCase No. 71222 is hereby AFFIRMED.

SO ORDERED.

Fernan (Chairman), Gutierrez, Jr., Padilla, Bidin and Cortes, JJ., concur.

Alampay, J., took no part.

Footnotes

* Penned by Justice Ruperto G. Martin concurred in by Justices Andres Reyes andMateo Canonoy.

** Penned by Judge Gregorio T. Lantin.

834 F.2d 1142

1988 Copr.L.Dec. P 26,200

BRANDIR INTERNATIONAL, INC., Plaintiff-Appellant,v.CASCADE PACIFIC LUMBER CO., d/b/a Columbia Cascade Co.,Defendant-Appellee,andDavid L. Ladd, Register of Copyrights, United StatesCopyright Office, Third-Party Defendant.


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No. 828, Docket 86-6260.

United States Court of Appeals,Second Circuit.

Argued March 2, 1987.Decided Dec. 2, 1987.

Blum Kaplan, New York City (Lawrence Rosenthal, Laura E. Goldbard, Anita K.Yeung, New York City, of counsel), for plaintiff-appellant.

Fish & Neave, New York City (Donald E. Degling, Susan Progoff, Eric M. Lee, NewYork City, of counsel), for defendant-appellee.

Before OAKES and WINTER, Circuit Judges, and ZAMPANO, District Judge.*

OAKES, Circuit Judge:

1

In passing the Copyright Act of 1976 Congress attempted to distinguish betweenprotectable "works of applied art" and "industrial designs not subject to copyrightprotection." See H.R.Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976U.S.Code Cong. & Admin.News 5659, 5667 (hereinafter H.R.Rep. No. 1476). Thecourts, however, have had difficulty framing tests by which the fine line establishing

what is and what is not copyrightable can be drawn. Once again we are called upon todraw such a line, this time in a case involving the "RIBBON Rack," a bicycle rackmade of bent tubing that is said to have originated from a wire sculpture. (Aphotograph of the rack is contained in the appendix to this opinion.) We are alsocalled upon to determine whether there is any trademark protection available to themanufacturer of the bicycle rack, appellant Brandir International, Inc. The Register ofCopyright, named as a third-party defendant under the statute, 17 U.S.C. Sec. 411, butelecting not to appear, denied copyrightability. In the subsequent suit brought in theUnited States District Court for the Southern District of New York, Charles S. Haight,Jr., Judge, the district court granted summary judgment on both the copyright and

trademark claims to defendant Cascade Pacific Lumber Co., d/b/a Columbia CascadeCo., manufacturer of a similar bicycle rack. We affirm as to the copyright claim, butreverse and remand as to the trademark claim.

2
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Against the history of copyright protection well set out in the majority opinion inCarol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411, 415-18 (2d Cir.1985),and in Denicola, Applied Art and Industrial Design: A Suggested Approach toCopyright in Useful Articles, 67 Minn.L.Rev. 707, 709-17 (1983), Congress adoptedthe Copyright Act of 1976. The "works of art" classification of the Copyright Act of

1909 was omitted and replaced by reference to "pictorial, graphic, and sculpturalworks," 17 U.S.C. Sec. 102(a)(5). According to the House Report, the new categorywas intended to supply "as clear a line as possible between copyrightable works ofapplied art and uncopyrighted works of industrial design." H.R.Rep. No. 1476, at 55,U.S.Code Cong. & Admin.News 1976, p. 5668. The statutory definition of "pictorial,graphic, and sculptural works" states that "the design of a useful article, as defined inthis section, shall be considered a pictorial, graphic, or sculptural work only if, andonly to the extent that, such design incorporates pictorial, graphic, or sculpturalfeatures that can be identified separately from, and are capable of existingindependently of, the utilitarian aspects of the article." 17 U.S.C. Sec. 101.1Thelegislative history added gloss on the criteria of separate identity and independentexistence in saying:

3

On the other hand, although the shape of an industrial product may be aestheticallysatisfying and valuable, the Committee's intention is not to offer it copyrightprotection under the bill. Unless the shape of an automobile, airplane, ladies' dress,food processor, television set, or any other industrial product contains some elementthat, physically or conceptually, can be identified as separable from the utilitarianaspects of that article, the design would not be copyrighted under the bill.

4

H.R.Rep. No. 1476, at 55, U.S.Code Cong. & Admin.News 1976, p. 5668.

5

As courts and commentators have come to realize, however, the line Congressattempted to draw between copyrightable art and noncopyrightable design "was

neither clear nor new." Denicola, supra, 67 Minn.L.Rev. at 720. One aspect of thedistinction that has drawn considerable attention is the reference in the House Reportto "physically or conceptually " (emphasis added) separable elements. The District ofColumbia Circuit in Esquire, Inc. v. Ringer, 591 F.2d 796, 803-04 (D.C.Cir.1978)(holding outdoor lighting fixtures ineligible for copyright), cert. denied, 440 U.S. 908,99 S.Ct. 1217, 59 L.Ed.2d 456 (1979), called this an "isolated reference" and gave itno significance. Professor Nimmer, however, seemed to favor the observations of
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Judge Harold Leventhal in his concurrence in Esquire, who stated that "the overalllegislative policy ... sustains the Copyright Office in its effort to distinguish betweenthe instances where the aesthetic element is conceptually severable and the instanceswhere the aesthetic element is inextricably interwoven with the utilitarian aspect ofthe article." 591 F.2d at 807; see 1 Nimmer on Copyright Sec. 2.08[B] at 2-93 to 2-

96.2 (1986). But see Gerber, Book Review, 26 U.C.L.A.L.Rev. 925, 938-43 (1979)(criticizing Professor Nimmer's view on conceptual separability). Looking to thesection 101 definition of works of artistic craftsmanship requiring that artistic featuresbe "capable of existing independently of the utilitarian aspects," Professor Nimmerqueries whether that requires physical as distinguished from conceptual separability,but answers his query by saying "[t]here is reason to conclude that it does not." See 1Nimmer on Copyright Sec. 2.08[B] at 2-96.1. In any event, in Kieselstein-Cord v.Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir.1980), this court accepted theidea that copyrightability can adhere in the "conceptual" separation of an artisticelement. Indeed, the court went on to find such conceptual separation in reference toornate belt buckles that could be and were worn separately as jewelry. Kieselstein-Cord was followed in Norris Industries, Inc. v. International Telephone & TelegraphCorp., 696 F.2d 918, 923-24 (11th Cir.), cert. denied, 464 U.S. 818, 104 S.Ct. 78, 78L.Ed.2d 89 (1983), although there the court upheld the Register's refusal to registerautomobile wire wheel covers, finding no "conceptually separable" work of art. Seealso Transworld Mfg. Corp. v. Al Nyman & Sons, Inc., 95 F.R.D. 95 (D.Del.1982)(finding conceptual separability sufficient to support copyright in denying summaryjudgment on copyrightability of eyeglass display cases).

6

In Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.1985), adivided panel of this circuit affirmed a district court grant of summary judgment ofnoncopyrightability of four life-sized, anatomically correct human torso forms. CarolBarnhart distinguished Kieselstein-Cord, but it surely did not overrule it. Thedistinction made was that the ornamented surfaces of the Kieselstein-Cord beltbuckles "were not in any respect required by their utilitarian functions," but thefeatures claimed to be aesthetic or artistic in the Carol Barnhart forms were"inextricably intertwined with the utilitarian feature, the display of clothes." 773 F.2d

at 419. But cf. Animal Fair, Inc. v. Amfesco Indus., Inc., 620 F.Supp. 175, 186-88(D.Minn.1985) (holding bear-paw design conceptually separable from the utilitarianfeatures of a slipper), aff'd mem., 794 F.2d 678 (8th Cir.1986). As Judge Newman'sdissent made clear, the Carol Barnhart majority did not dispute "that 'conceptualseparability' is distinct from 'physical separability' and, when present, entitles thecreator of a useful article to a copyright on its design." 773 F.2d at 420.

7


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"Conceptual separability" is thus alive and well, at least in this circuit. The problem,however, is determining exactly what it is and how it is to be applied. JudgeNewman's illuminating discussion in dissent in Carol Barnhart, see 773 F.2d at 419-24, proposed a test that aesthetic features are conceptually separable if "the article ...stimulate[s] in the mind of the beholder a concept that is separate from the concept

evoked by its utilitarian function." Id. at 422. This approach has received favorableendorsement by at least one commentator, W. Patry, Latman's The Copyright Law 43-45 (6th ed. 1986), who calls Judge Newman's test the "temporal displacement" test. Itis to be distinguished from other possible ways in which conceptual separability canbe tested, including whether the primary use is as a utilitarian article as opposed to anartistic work, whether the aesthetic aspects of the work can be said to be "primary,"and whether the article is marketable as art, none of which is very satisfactory. ButJudge Newman's test was rejected outright by the majority as "a standard so etherealas to amount to a 'nontest' that would be extremely difficult, if not impossible, toadminister or apply." 773 F.2d at 419 n. 5.

8

Perhaps the differences between the majority and the dissent in Carol Barnhart mighthave been resolved had they had before them the Denicola article on Applied Art andIndustrial Design: A Suggested Approach to Copyright in Useful Articles, supra.There, Professor Denicola points out that although the Copyright Act of 1976 was aneffort " 'to draw as clear a line as possible,' " in truth "there is no line, but merely aspectrum of forms and shapes responsive in varying degrees to utilitarian concerns."67 Minn.L.Rev. at 741. Denicola argues that "the statutory directive requires adistinction between works of industrial design and works whose origins lie outside thedesign process, despite the utilitarian environment in which they appear." He viewsthe statutory limitation of copyrightability as "an attempt to identify elements whoseform and appearance reflect the unconstrained perspective of the artist," such featuresnot being the product of industrial design. Id. at 742. "Copyrightability, therefore,should turn on the relationship between the proffered work and the process ofindustrial design." Id. at 741. He suggests that "the dominant characteristic ofindustrial design is the influence of nonaesthetic, utilitarian concerns" and henceconcludes that copyrightability "ultimately should depend on the extent to which the

work reflects artistic expression uninhibited by functional considerations."2Id. Tostate the Denicola test in the language of conceptual separability, if design elementsreflect a merger of aesthetic and functional considerations, the artistic aspects of awork cannot be said to be conceptually separable from the utilitarian elements.Conversely, where design elements can be identified as reflecting the designer'sartistic judgment exercised independently of functional influences, conceptualseparability exists.


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9

We believe that Professor Denicola's approach provides the best test for conceptualseparability and, accordingly, adopt it here for several reasons. First, the approach isconsistent with the holdings of our previous cases. In Kieselstein-Cord, for example,

the artistic aspects of the belt buckles reflected purely aesthetic choices, independentof 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 theinfluence of functional concerns. Though the torsos bore artistic features, it wasevident that the designer incorporated those features to further the usefulness of thetorsos as mannequins. Second, the test's emphasis on the influence of utilitarianconcerns in the design process may help, as Denicola notes, to "alleviate the de factodiscrimination against nonrepresentational art that has regrettably accompanied muchof the current analysis." Id. at 745.3Finally, and perhaps most importantly, we thinkDenicola's test will not be too difficult to administer in practice. The work itself willcontinue to give "mute testimony" of its origins. In addition, the parties will berequired to present evidence relating to the design process and the nature of the work,with the trier of fact making the determination whether the aesthetic design elementsare significantly influenced by functional considerations.

10

Turning now to the facts of this case, we note first that Brandir contends, and its chiefowner David Levine testified, that the original design of the RIBBON Rack stemmedfrom wire sculptures that Levine had created, each formed from one continuousundulating piece of wire. These sculptures were, he said, created and displayed in hishome as a means of personal expression, but apparently were never sold or displayedelsewhere. He also created a wire sculpture in the shape of a bicycle and states that hedid not give any thought to the utilitarian application of any of his sculptures until heaccidentally juxtaposed the bicycle sculpture with one of the self-standing wiresculptures. It was not until November 1978 that Levine seriously began pursuing theutilitarian application of his sculptures, when a friend, G. Duff Bailey, a bicycle buffand author of numerous articles about urban cycling, was at Levine's home andinformed him that the sculptures would make excellent bicycle racks, permittingbicycles to be parked under the overloops as well as on top of the underloops.Following this meeting, Levine met several times with Bailey and others, completingthe designs for the RIBBON Rack by the use of a vacuum cleaner hose, andsubmitting his drawings to a fabricator complete with dimensions. The BrandirRIBBON Rack began being nationally advertised and promoted for sale in September1979.

11


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In November 1982 Levine discovered that another company, Cascade Pacific LumberCo., was selling a similar product. Thereafter, beginning in December 1982, acopyright notice was placed on all RIBBON Racks before shipment and on December10, 1982, five copyright applications for registration were submitted to the CopyrightOffice. The Copyright Office refused registration by letter, stating that the RIBBON

Rack did not contain any element that was "capable of independent existence as acopyrightable pictorial, graphic or sculptural work apart from the shape of the usefularticle." An appeal to the Copyright Office was denied by letter dated March 23, 1983,refusing registration on the above ground and alternatively on the ground that thedesign lacked originality, consisting of "nothing more than a familiar public domainsymbol." In February 1984, after the denial of the second appeal of the examiner'sdecision, Brandir sent letters to customers enclosing copyright notices to be placed onracks sold prior to December 1982.

12

Between September 1979 and August 1982 Brandir spent some $38,500 foradvertising and promoting the RIBBON Rack, including some 85,000 pieces ofpromotional literature to architects and landscape architects. Additionally, sinceOctober 1982 Brandir has spent some $66,000, including full-, half-, and quarter-pageadvertisements in architectural magazines such as Landscape Architecture,Progressive Architecture, and Architectural Record, indeed winning an advertisingaward from Progressive Architecture in January 1983. The RIBBON Rack has beenfeatured in Popular Science, Art and Architecture, and Design 384 magazines, and itwon an Industrial Designers Society of America design award in the spring of 1980.In the spring of 1984 the RIBBON Rack was selected from 200 designs to be includedamong 77 of the designs exhibited at the Katonah Gallery in an exhibition entitled"The Product of Design: An Exploration of the Industrial Design Process," anexhibition that was written up in the New York Times.

13

Sales of the RIBBON Rack from September 1979 through January 1985 were inexcess of $1,367,000. Prior to the time Cascade Pacific began offering for sale itsbicycle rack in August 1982, Brandir's sales were $436,000. The price of theRIBBON Rack ranges from $395 up to $2,025 for a stainless steel model andgenerally depends on the size of the rack, one of the most popular being the RB-7,selling for $485.

14


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Applying Professor Denicola's test to the RIBBON Rack, we find that the rack is notcopyrightable. It seems clear that the form of the rack is influenced in significantmeasure by utilitarian concerns and thus any aesthetic elements cannot be said to beconceptually separable from the utilitarian elements. This is true even though thesculptures which inspired the RIBBON Rack may well have been--the issue of

originality aside--copyrightable.

15

Brandir argues correctly that a copyrighted work of art does not lose its protectedstatus merely because it subsequently is put to a functional use. The Supreme Court soheld in Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954), andCongress specifically intended to accept and codify Mazer in section 101 of theCopyright Act of 1976. See H.R.Rep. No. 1476 at 54-55. The district court thus erredin ruling that, whatever the RIBBON Rack's origins, Brandir's commercialization of

the rack disposed of the issue of its copyrightability.

16

Had Brandir merely adopted one of the existing sculptures as a bicycle rack, neitherthe application to a utilitarian end nor commercialization of that use would havecaused the object to forfeit its copyrighted status. Comparison of the RIBBON Rackwith the earlier sculptures, however, reveals that while the rack may have beenderived in part from one of more "works of art," it is in its final form essentially aproduct of industrial design. In creating the RIBBON Rack, the designer has clearly

adapted the original aesthetic elements to accommodate and further a utilitarianpurpose. These altered design features of the RIBBON Rack, including thespacesaving, open design achieved by widening the upper loops to permit parkingunder as well as over the rack's curves, the straightened vertical elements that allowin- and above-ground installation of the rack, the ability to fit all types of bicycles andmopeds, and the heavy-gauged tubular construction of rustproof galvanized steel, areall features that combine to make for a safe, secure, and maintenance-free system ofparking bicycles and mopeds. Its undulating shape is said in Progressive Architecture,January 1982, to permit double the storage of conventional bicycle racks. Moreover,the rack is manufactured from 2 3/8-inch standard steam pipe that is bent into form,the six-inch radius of the bends evidently resulting from bending the pipe according toa standard formula that yields bends having a radius equal to three times the nominalinternal diameter of the pipe.

17


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Brandir argues that its RIBBON Rack can and should be characterized as a sculpturalwork of art within the minimalist art movement. Minimalist sculpture's mostoutstanding feature is said to be its clarity and simplicity, in that it often takes theform of geometric shapes, lines, and forms that are pure and free of ornamentation andvoid of association. As Brandir's expert put it, "The meaning is to be found in, within,

around and outside the work of art, allowing the artistic sensation to be experienced aswell as intellectualized." People who use Foley Square in New York City see in theform of minimalist art the "Tilted Arc," which is on the plaza at 26 Federal Plaza.Numerous museums have had exhibitions of such art, and the school of minimalist arthas many admirers.

18

It is unnecessary to determine whether to the art world the RIBBON Rack properlywould be considered an example of minimalist sculpture. The result under the

copyright statute is not changed. Using the test we have adopted, it is not enough that,to paraphrase Judge Newman, the rack may stimulate in the mind of the reasonableobserver a concept separate from the bicycle rack concept. While the RIBBON Rackmay be worthy of admiration for its aesthetic qualities alone, it remains nonethelessthe product of industrial design. Form and function are inextricably intertwined in therack, its ultimate design being as much the result of utilitarian pressures as aestheticchoices. Indeed, the visually pleasing proportions and symmetricality of the rackrepresent design changes made in response to functional concerns. Judging from theawards the rack has received, it would seem in fact that Brandir has achieved with theRIBBON Rack the highest goal of modern industrial design, that is, the harmoniousfusion of function and aesthetics. Thus there remains no artistic element of theRIBBON Rack that can be identified as separate and "capable of existingindependently, of, the utilitarian aspects of the article." Accordingly, we must affirmon the copyright claim.

19

As to whether the configuration of Brandir's bicycle rack can be protected under eithersection 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a), or New York State unfaircompetition law, we are reminded that the design of a product itself may function asits packaging or protectable trade dress. See LeSportsac, Inc. v. K mart Corp., 754F.2d 71, 75 (2d Cir.1985). The district court dismissed Brandir's claims, saying that itsanalysis of the copyright issue was sufficient to dispose of the Lanham Act andcommon law claims. The court stated "the design feature of the Ribbon Racks isclearly dictated by the function to be performed, namely, holding up bicycles. If thesteam pipes were not bent into the design, but instead remained flat, the bicycleswould not stand up, they would fall down." But as Judge Newman noted in his dissent


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in Carol Barnhart, 773 F.2d at 420 n. 1, the principle of conceptual separability offunctional design elements in copyright law is different from the somewhat similarprinciple of functionality as developed in trademark law. For trademark purposes, hepointed out, a design feature "has been said to be functional if it is 'essential to the useor purpose of the article' or 'affects the cost or quality of the article.' " Id. (quoting

Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n. 10, 102S.Ct. 2182, 2187 n. 10, 72 L.Ed.2d 606 (1982)); see LeSportsac, Inc. v. K mart Corp.,754 F.2d at 75-76 (trade dress of a product is eligible for protection if it has acquired asecondary meaning and is nonfunctional).4

20

Here, the district court limited its inquiry to determining whether portions of theRIBBON Rack performed the function of a bicycle rack. But the fact that a designfeature performs a function does not make it essential to the performance of that

function; it is instead the absence of alternative constructions performing the samefunction that renders the feature functional. Thus, the true test of functionality is notwhether the feature in question performs a function, but whether the feature "isdictated by the functions to be performed," Warner Bros. Inc. v. Gay Toys, Inc., 724F.2d 327, 331 (2d Cir.1983) (quoted in LeSportsac, Inc. v. K mart Corp., 754 F.2d at76), as evidenced by available alternative constructions. See Metro Kane Imports, Ltd.v. Rowoco, Inc., 618 F.Supp. 273, 275-76 (S.D.N.Y.1985), aff'd mem., 800 F.2d 1128(2d Cir.1986) (finding high-tech design of orange juice squeezer not dictated byfunction to be performed as there was no evidence that design permitted juicer to bemanufactured at lower price or with altered performance). There are numerousalternative bicycle rack constructions. The nature, price, and utility of theseconstructions are material issues of fact not suitable for determination by summaryjudgment.5For example, while it is true that the materials used by Brandir arestandard-size pipes, we have no way of knowing whether the particular size andweight of the pipes used is the best, the most economical, or the only available sizeand weight pipe in the marketplace. We would rather think the opposite might be thecase. So, too, with the dimension of the bends being dictated by a standard formulacorresponding to the pipe size; it could be that there are many standard radii and thatthe particular radius of Brandir's RIBBON Rack actually required new tooling. This

issue of functionality on remand should be viewed in terms of bicycle racks generallyand not one-piece undulating bicycle racks specifically. See id. at 330-32; see also Inre DC Comics, Inc., 689 F.2d 1042, 1045 (C.C.P.A.1982) (dolls generally and notSuperman dolls are the class by which functionality is determined). We reverse andremand as to the trademark and unfair competition claims.

21
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Judgment affirmed as to the copyright claim; reversed and remanded as to thetrademark and unfair competition claims.

APPENDIX

22

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOTVIEWABLE

APPENDIX

23

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT

VIEWABLEWINTER, Circuit Judge, concurring in part and dissenting in part:

24

Although I concur in the reversal of the district court's grant of summary judgment onthe trademark and unfair competition claims, I respectfully dissent from the majority'sdiscussion and disposition of the copyright claim.

25

My colleagues, applying an adaptation of Professor Denicola's test, hold that theaesthetic elements of the design of a useful article are not conceptually separable fromits utilitarian aspects if "[f]orm and function are inextricably intertwined" in thearticle, and "its ultimate design [is] as much the result of utilitarian pressures asaesthetic choices." Applying that test to the instant matter, they observe that thedispositive fact is that "in creating the Ribbon Rack, [Levine] has clearly adapted theoriginal aesthetic elements to accommodate and further a utilitarian purpose."(emphasis added). The grounds of my disagreement are that: (1) my colleagues'adaptation of Professor Denicola's test diminishes the statutory concept of "conceptualseparability" to the vanishing point; and (2) their focus on the process or sequence

followed by the particular designer makes copyright protection depend upon largelyfortuitous circumstances concerning the creation of the design in issue.

26

With regard to "conceptual separability," my colleagues deserve considerable creditfor their efforts to reconcile Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d


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411 (2d Cir.1985) with Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989(2d Cir.1980). In my view, these cases are not reconcilable. Carol Barnhart paid onlylip service to the fact that the "conceptual separability" of an article's aestheticutilitarian aspects may render the design of a "useful article" a copyrightable"sculptural work." 17 U.S.C. Sec. 101 (1982). Actually, the Carol Barnhart majority

applied a test of physical separability. They thus stated:

27

What distinguishes [the Kieselstein Cord ] buckles from the Barnhart forms is that theornamented surfaces of the buckles were not in any respect required by theirutilitarian functions; the artistic and aesthetic features could thus be conceived of ashaving been added to, or superimposed upon, an otherwise utilitarian article. Theunique artistic design was wholly unnecessary to performance of the utilitarianfunction. 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 ofthe shoulders are inextricably intertwined with the utilitarian feature, the display ofclothes.

28

773 F.2d at 419 (emphasis added). In contrast, Kieselstein-Cord focused on the factthat the belt buckles at issue could be perceived as objects other than belt buckles:

29

We see in appellant's belt buckles conceptually separable sculptural elements, asapparently have the buckles' wearers who have used them as ornamentation for partsof the body other than the waist.

30

632 F.2d at 993.

31

My colleagues' adaptation of the Denicola test tracks the Carol Barnhart approach,whereas I would adopt that taken in Kieselstein-Cord, which allows for thecopyrightability of the aesthetic elements of useful articles even if those elementssimultaneously perform utilitarian functions.1The latter approach received its fullestelaboration in Judge Newman's dissent in Carol Barnhart, where he explained that"[f]or the [artistic] design features to be 'conceptually separate' from the utilitarian
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aspects of the useful article that embodies the design, the article must stimulate in themind of the beholder a concept that is separate from the concept evoked by itsutilitarian function." 773 F.2d at 422 (Newman, J., dissenting).

32

In other words, the relevant question is whether the design of a useful article, howeverintertwined with the article's utilitarian aspects, causes an ordinary reasonableobserver to perceive an aesthetic concept not related to the article's use. The answer tothis question is clear in the instant case because any reasonable observer would easilyview the Ribbon Rack as an ornamental sculpture.2Indeed, there is evidence of actualconfusion over whether it is strictly ornamental in the refusal of a building manager toaccept delivery until assured by the buyer that the Ribbon Rack was in fact a bicyclerack. Moreover, Brandir has received a request to use the Ribbon Rack asenvironmental sculpture, and has offered testimony of art experts who claim that the

Ribbon Rack may be valued solely for its artistic features. As one of those expertsobserved: "If one were to place a Ribbon Rack on an island without access, or in apark and surround the work with a barrier, ... its status as a work of art would bebeyond dispute."3

33

My colleagues also allow too much to turn upon the process or sequence of designfollowed by the designer of the Ribbon Rack. They thus suggest that copyrightprotection would have been accorded "had Brandir merely adopted ... as a bicycle

rack" an enlarged version of one of David Levine's original sculptures rather than onethat had wider upper loops and straightened vertical elements. I cannot agree thatcopyright protection for the Ribbon Rack turns on whether Levine serendipitouslychose the final design of the Ribbon Rack during his initial sculptural musings orwhether the original design had to be slightly modified to accommodate bicycles.Copyright protection, which is intended to generate incentives for designers byaccording property rights in their creations, should not turn on purely fortuitousevents. For that reason, the Copyright Act expressly states that the legal test is howthe final article is perceived, not how it was developed through various stages. It thusstates in pertinent part:

34

the design of a useful article ... shall be considered a ... sculptural work only if, andonly to the extent that, such design incorporates ... sculptural features that can beidentified separately from, and are capable of existing independently of, the utilitarianaspects of the article.
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35

17 U.S.C. Sec. 101 (1982) (emphasis added).

36

I therefore dissent from the decision so far as it relates to copyrightability but concurin its discussion and holding as to the trademark and unfair competition claims.

*

Of the United States District Court for the District of Connecticut, sitting bydesignation

1

The statute also defines "useful article" as one "having an intrinsic utilitarian functionthat is not merely to portray the appearance of the article or to convey information. Anarticle that is normally a part of a useful article is considered a 'useful article.' " 17U.S.C. Sec. 101

2

Professor Denicola rejects the exclusion of all works created with some utilitarianapplication in view, for that would not only overturn Mazer v. Stein, 347 U.S. 201, 74

S.Ct. 460, 98 L.Ed. 630 (1954), on which much of the legislation is based, but also "ahost of other eminently sensible decisions, in favor of an intractable factual inquiry ofquestionable relevance." 67 Minn.L.Rev. at 741. He adds that "[a]ny such categoricalapproach would also undermine the legislative determination to preserve an artist'sability to exploit utilitarian markets." Id. (citing 17 U.S.C. Sec. 113(a) (1976))

3

We are reminded not only by Judge Gesell in the district court in Esquire, 414 F.Supp.939, 941 (D.D.C.1976), but by Holmes in Bleistein v. Donaldson Lithographing Co.,

188 U.S. 239, 251-52, 23 S.Ct. 298, 300-01, 47 L.Ed. 460 (1903), by Mazer v. Stein,347 U.S. at 214, 74 S.Ct. at 468, and by numerous other opinions, that we judgesshould not let our own view of styles of art interfere with the decisionmaking processin this area. Denicola suggests that the shape of a Mickey Mouse telephone iscopyrightable because its form is independent of function, and "[a] telephone shapeowing more to Arp, Brancusi, or Moore than Disney may be equally divorced fromutilitarian influence." 67 Minn.L.Rev. at 746. This is true, of course, of the artist
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Christo's "Running Fence," approved (following Professor Nimmer) as an example ofconceptual separability in Keiselstein-Cord, 632 F.2d at 993

4

Because the district court viewed the rack as entirely functional, it therefore did notreach the next step of determining whether Brandir's RIBBON Rack had acquiredsecondary meaning by the time Cascade started to manufacture its bicycle rack

5

Indeed, in addition to the numerous bicycle racks on the market, one may observetrees, awning supports, parking meters, signs, fire plugs, and many other objects usedas bicycle racks

1

Indeed, Kieselstein-Cord approved Professor Nimmer's example of Christo's"Running Fence" as an object whose sculptural features were conceptually, but notphysically, separable from its utilitarian aspects. 632 F.2d at 993; see 1 Nimmer onCopyright Sec. 2.08[B] at 2-96.1 & n. 112.2 (1987). The fact that the Running Fence'saesthetic features were "inextricably intertwined" with its functional aspects, however,creates doubt as to whether it is a copyrightable "sculptural work" under CarolBarnhart or the instant decision

2

The reasonable observer may be forgiven, however, if he or she does not recognizethe Ribbon Rack as an example of minimalist art

3

The Copyright Office held that the Ribbon Rack was not copyrightable because itlacked originality. There may be some merit in that view in light of the Ribbon Rack'suse of standard radii. This issue, however, was not raised in defendant's motion for

summary judgment, was not addressed by the district court, and is not implicated here

CC| Transformed byPublic.Resource.Org
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FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE

SERVICE CO., 499 U.S. 340 (1991)

O'CONNOR, J., delivered the opinion of the Court,

in which REHNQUIST, C. J., and WHITE,MARSHALL, STEVENS, SCALIA, KENNEDY, andSOUTER, JJ., joined. BLACKMUN, J., concurred inthe judgment.

[p*342] JUSTICE O'CONNOR delivered the opinion of the Court.

[1] This case requires us to clarify the extent of copyright protection available to

telephone directory white pages.

I

[2] Rural Telephone Service Company is a certified public utility that providestelephone service to several communities in northwest Kansas. It is subject to a stateregulation that requires all telephone companies operating in Kansas to issue annuallyan updated telephone directory. Accordingly, as a condition of its monopoly franchise,Rural publishes a typical telephone directory, consisting of white pages and yellowpages. The white pages list in alphabetical order the names of Rural's subscribers,

together with their towns and telephone numbers. The yellow pages list Rural'sbusiness subscribers alphabetically by category and feature classified advertisementsof various sizes. Rural distributes its directory free of charge to its subscribers, butearns revenue by selling yellow pages advertisements.

[3] Feist Publications, Inc., is a publishing company that specializes in area-widetelephone directories. Unlike a typical [p*343] directory, which covers only aparticular calling area, Feist's area-wide directories cover a much larger geographicalrange, reducing the need to call directory assistance or consult multiple directories.The Feist directory that is the subject of this litigation covers 11 different telephone

service areas in 15 counties and contains 46,878 white pages listings -- compared toRural's approximately 7,700 listings. Like Rural's directory, Feist's is distributed freeof charge and includes both white pages and yellow pages. Feist and Rural competevigorously for yellow pages advertising.

[4] As the sole provider of telephone service in its service area, Rural obtainssubscriber information quite easily. Persons desiring telephone service must apply to


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Rural and provide their names and addresses; Rural then assigns them a telephonenumber. Feist is not a telephone company, let alone one with monopoly status, andtherefore lacks independent access to any subscriber information. To obtain whitepages listings for its area-wide directory, Feist approached each of the 11 telephonecompanies operating in northwest Kansas and offered to pay for the right to use its

white pages listings.

[5] Of the 11 telephone companies, only Rural refused to license its listings to Feist.Rural's refusal created a problem for Feist, as omitting these listings would have left agaping hole in its area-wide directory, rendering it less attractive to potential yellowpages advertisers. In a decision subsequent to that which we review here, the DistrictCourt determined that this was precisely the reason Rural refused to license itslistings. The refusal was motivated by an unlawful purpose "to extend its monopoly intelephone service to a monopoly in yellow pages advertising."Rural TelephoneService Co. v.Feist Publications, Inc., 737 F. Supp. 610, 622 (Kan. 1990).

[6] Unable to license Rural's white pages listings, Feist used them without Rural'sconsent. Feist began by removing several thousand listings that fell outside thegeographic range of its area-wide directory,

assignment for nov

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