CITE: 414 F. Supp. 939
CMON: May 1976
PLAIN: Esquire, Inc.
DEFND: Barbara Ringer
COURT: United States District Court for the District of Columbia 
DATE: May 5, 1976 

  Given the Bleistein and Mazur decisions, an artistic design for a lighting
  fixture is copyrightable.

JUDGE: GESELL, District Judge

In this mandamus action, Esquire asks the Court to direct the Register of
Copyrights to register Esquire's claims to copyright for an artistic design
of a lighting fixture. The fixture is in nontraditional form, devoid of
ornamentation or decoration but of pleasing shape and used apparently for
outside lighting of parking lots and other open spaces and is well suited to
accompany structures of so-called functional design.  It is conceded that the
design of the fixture is original and would be qualified and accepted for
registration if it did not have solely an obvious utilitarian purpose.  In
challenging the Register's refusal to register, Esquire relies on Article I,
Section VIII of the Constitution, the copyright law, Title 17, U.S.C., and
applicable regulations, notably 37 C.F.R. Section 202.10, and the decision
of the Supreme Court in Mazer v. Stein, 347 U.S. 201, 74 S. Ct. 460, 98 L.
Ed. 630 (1954). The matter is before the Court on cross-motions for summary
judgment after briefs and oral argument.  Since registration is essentially
a ministerial act, the proper remedy is mandamus. Bouve v. Twentieth-Century
Fox Film Corp., 74 App. D.C. 271, 122 F.2d 51 (1941).
The Copyright Office regulations provide, inter alia,

    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.
    37 C.F.R. 202.10(c).
Although there is no dispute that the features are original creations having
aesthetic appeal, registration was denied on the theory that there was
nothing separate or distinguishable from the shape of the intrinsically
useful object and that the design as a whole could not be separately
identified as a work of art.

The Register insists that the shapes and forms of all useful articles are
not protected by the Copyright Act.  She points out that the proposition
that the shape of utilitarian objects cannot be copyrighted has been
expressed constantly since 1910, when the initial regulations stated
"productions of the industrial arts utilitarian in purpose and character
are not subject to copyright registration, even if artistically made or
ornamental", Copyright Office Regs., 1910, Rule 12(g), cited in Mazer v.
Stein, supra, 347 U.S. at 212 n. 23, 74 S. Ct. at 467, 98 L. Ed. at 639.
Mazer v. Stein, supra, controls the outcome of the elusive semantic dispute
inherent in 37 C.F.R. Section 202.10(c).  In Mazer the Court held that works
of art are eligible articles for copyright even if intended for use in
industry.  The Court explicitly stated that if a work of art is an element
in a manufactured article having a utilitarian purpose it is not barred
from registration.
The Register concedes that an independent work of art in the historic and
ordinary sense does not lose its character by incorporation in a useful
article.  The Register has for many years registered forms of traditional
sculpture and indeed, as this record and Mazer note, when such sculpture
is used in household lamps and candlesticks it has repeatedly been accepted
for registration.
But the term "art" is not confined to traditional forms of fine arts, as
Mazer also teaches.  See also Bleistein v. Donaldson Lithographing Co.,
188 U.S. 239, 251-52, 23 S. Ct. 298, 300, 47 L. Ed. 460 (1903). The forms
of the articles here in dispute are clearly art.
These outdoor lights serve both to decorate and to illuminate.  Indeed,
during the day they are exclusively decorative.  They are a type of sculpture
which is both original and aesthetically pleasing. Surely they would satisfy
a Gropius or a Brancusi far more than would a Rembrandt portrait, and to
many they are more artistic than some examples of sculpture found at such
museums as the Corcoran or the Hirshhorn.  Art through the ages has often
served a utilitarian purpose.{n1} The Caryatids of the Acropolis or Cellini's
exquisite saltcellar are two of many examples of traditional art serving
such a purpose.  There has always been a close link between art and science.
The forms represented by Esquire's fixtures emphasize line and shape rather
than the realistic or the ornate but it is not for the Register to reject
them on artistic grounds, Bleistein v. Donaldson Lithographing Co., supra,
or because the form is accommodated to a utilitarian purpose, Mazer v. Stein,
supra. There cannot be and there should not be any national standard of
what constitutes art and the pleasing forms of the Esquire fixtures are
entitled to the same recognition afforded more traditional sculpture.
The true difficulty which the Register envisions is the prospect of
registering myriads of industrial designs of everything from automobiles
to bathtubs to dresses.  The consequent possibility of up to 56 years of
protection and resulting inhibitions upon competitive activity by those
who capitalize on others' ingenuity is highly undesirable.  New statutes
are in Congress to deal with industrial design copyrights and the Court
is urged to support the Register's discretion while the bills wend their
way through the legislative process.  But the Register cannot avoid the
Supreme Court's interpretation of the copyright law in the interim.  The
Register believes that a grant of copyright in this instance will open
the floodgates to copyrighting of industrial designs.  The Court views
the matter within a narrower focus and finds it unnecessary to determine
whether the Register can tighten the applicable regulations and still meet
Mazer's holding.  The instant case concerns lighting in combination with
sculpture. Here past interpretations of the existing regulations which have
allowed registration for household lamps and candlesticks give content to
the copyright regulations and create an interpretative precedent binding
Summary judgment is granted plaintiff and denied defendants.



"All the handicrafts possess a scientific content which has grown up along
with them and is embodied in their practice.  The manufactured article is
the joint product of the science and the practice which are combined in the
handicraft." Plato, Politicus, p. 258.