CITE:  205 F.2d 633
CMON:  June 1953
PLAIN: Rosenthal et al.
DEFND: Stein et al.
COURT: United States Court of Appeals Ninth Circuit
DATE:  June 26, 1953


Action by holders of work of art copyright upon four statuettes for
copyright infringement and unfair competition. Defendants filed counterclaims
and third party complaint. The United States District Court for the
Southern District Court of California, Central Division, Ernest J. Tolin,
J., 103 F. Supp. 227, entered judgment for copyright holders, and defendants
appealed.  The Court of Appeals, Stephens, Circuit Judge, held that, where
plaintiffs had work of art copyrights upon four statuettes, which both
plaintiffs and defendants used as lamp stands, statuettes continued in
their aesthetic use as art, and, therefore, defendants' use constituted 
infringement of plaintiffs' copyrights.


  Design patent law is not stronger than, nor does it prevail over,
  copyright law.  A copyright does not give any rights to functional
  use of work or art.  Appropriateness of copyright registration is
  determined by character of registered work of art as registered and
  not by ability, intent or hope to use it as dress for utilitarian

JUDGE: STEPHENS,  Circuit Judge
Before STEPHENS and POPE, Circuit Judges, and McCORMICK, District Judge.


Appellees, as plaintiffs in the United States District Court for the
Southern District of California, were victorious over appellants, as
defendants, the court holding, contrary to defendants' claims, that the
latter had infringed and were infringing plaintiffs' work of art 
copyrights upon four statuettes. The statuettes represented respectively
an Egyptian female dancer, a curved ballet male dancer, and a curved
ballet female dancer, each clothed in character and posed upon a
substantial base.

The parts of the copyright act applicable here are:

    "Any person entitled thereto, upon complying with the provisions of
    this title, shall have the exclusive right: (a) To * * * copy, and
    vend the copyrighted work; * * *."  {1}  [Emphasis ours.]

Section 5 of the same title provides the copyrightable classifications
from subsections (a) to (m) inclusively. The classification involved in
the three statuette cases referred to herein, is:

	"(g) Works of art; models or designs for works of art." {2}

Appellants do not claim the right to copy or to vend the figures as
statuettes. They admit the validity of the copyrights and that they are
owned by appellees, but they do claim the right to make and to sell, and
admit that they do make and sell, exact copies of the statuettes as 
copyrighted except for an unseen pipe extending from the bottom of the
base through the length of the figure and obtruding very slightly above
the headdress. Through the pipe an electric cord is drawn and upon or in
the protrusion an ordinary electric light socket is screwed. The assembly
is now ready for the light bulb and shade, and is a lamp.

Appellees, as owners of the copyrights, do the very same thing, advertise
the lamp pictorially, and do an extensive business selling them.  In fact,
appellees first adapted the statuettes to use as lamp stands and appellants
followed with their acts of copying.

Appellants are of the view that, while a copyrighted work of art may not be
copied and sold without the consent of the copyright holder, yet when the
object copyrighted is combined with something else and the resulting
combination is a utility, the combination is not a copyrighted work of art
and is not and cannot be protected by the copyright law. District Judge
Tolin, in the instant case, Stein v. Rosenthal, 103 F.Supp. 227, was not
impressed with appellants' view and held, in effect, that the copyrightee
could use the work of art as a component part of a functional article
manufactured for sale as such, but no one else could do so without paying

Before Judge Tolin's decision in the instant case, the United States
District Court for the Northern District of Illinois, Judge La Buy
presiding, has the same point before it in the case of Stein v. Expert
Lamp Co., 96 F.Supp. 97, and the court held just the opposite from the
district court holding in our case. The copyrighted objects in suit were
crated by the same artist who created the copyrighted objects in our case.
The statuettes therein were entitled "Sculptured Figure of Female Balinese
Dancer". The court's opinion revealed the fact the court had mistakenly
thought the original of the statuettes had been copyrighted, equipped
for use as electric light standards. The court later corrected the error
but adhered to its decision. The United States Court of Appeals affirmed
the decision, Stein v. Expert Lamp Co., 7 Cir., 188 F.2d 611.

Subsequent to the two above referred to decisions and the affirmance of
the Expert Lamp Co. case in the Court of Appeals, the same point was
before the United States District Court for Maryland, Judge Coleman
presiding. Stein v. Mazer, D.C., 111 F.Supp. 359. The statuettes therein
were the six involved in the two actions above cited. The Maryland
District Court, which the Illinois federal court and the California
federal court opinions before it, followed the former. Upon appeal,
the United States Court of Appeals, with the foregoing cited opinions
before it, quoted liberally form the California District Court opinion
and, agreeing generally with it, reversed the judgement, Stein v. Mazer,
4 Cir., 1953, 204 F.2d 472. {2a}

A reading of the opinion last cited above will reveal the fact that the
issue is complicated with the subject of design letters-patent.  The law
as to design patents is in part as follows:

    "Any person who has invented any new, original, and ornamental design
    for an article of manufacture, * * * may * * * obtain a patent
    therefor, * * *" {3} 

It should be kept in mind, however, that no application for a design
patent has ever been made in either of the three actions which we have
referred to, but that the creator of the original statuettes in each of
the actions has received the exclusive right to "copy" and "vend" them
under the grant of the copyright privilege.

We do not read the design patent law as stronger or prevailing over the
copyright law, hence we are of the opinion that when the creator of the
statuettes was granted copyright privileges as to them, such privileges
became rights and cannot be affected by a speculation that possibly the
objects could have been patented as designs. And such rights cannot be
affected by the gratuitous use of the creations by strangers for ornamental
supports for a household utility -- in this case a lamp. The theory that
the use of a copyrighted work of art loses its status as a work of art if
and when it is put to a functional use has no basis in the wording of the
copyright laws and there is nothing in the design-patent laws which
excludes a work of art form the operation of the copyright laws.  We agree
with the note to the article in 66 Harv.L.R. 882 {3a} that "The argument
that useful articles purporting to be works of art should be excluded
from copyrighting because they may qualify for design patents is not

The area in which a thing would be either a copyrightable work of art or
a patentable design, but not the other, is perhaps unsurveyable.  Whether
a thing is a work of art or a patentable design, or is a patentable design
and not a work of art, cannot be determined by excluding one from the other.
A thing is a work of art if it appears to be within the historical and 
ordinary conception of the same token. The two are not necessarily distinct
one from the other. Neither goes to the functioning of a utility.

An opinion on copyright would be unusual indeed that die not mention the
case entitled Bleistein v. Donaldson Lithographing Company, 1903,
188 U.S. 239, 23 S.Ct. 298, 300, 47 L.Ed. 460. This is the celebrated
circus poster case in which Justice Holmes discoursed upon art and 
copyrights.  Plaintiffs sued defendant to recover the penalties prescribed
for infringement. The objects copyrighted were chromolithographs which,
as circus posters, were especially adapted to advertise "Wallace" shows.
After Wallace had "given them up" they were "used by less pretentious
exhibitions * * *." The trial court found for the defendant. It has been
suggested that the posters could not be the subjects of legal copyright
because they were not art and because they were used commercially. The
court said, 188 U.S. at page 251, 23 S.Ct. at page 300,

    "Again, the act, however construed, does not mean that ordinary
    posters are not good enough to be considered within its scope.
    The antithesis to 'illustrations or works connected with the fine 
    arts' is not works of little merit or of humble degree, * * * it
    is 'prints or labels designed to be used for any other articles
    of manufacture.' Certainly works are not the less connected with
    the fine arts because their pictorial quality attracts the crowd,
    and therefore gives them a real use, -- if use means to increase
    trade and to help to make money." Bleistein v. Donaldson Lithographing 
    Company, supra [The double quotations are from the copyright
    statutes relevant to the cited case].

Under the principles of the Bleistein case a work of art appears to be no
less subject to protection of a copyright if it is prepared for and used
commercially as a means of making money. We know of no authority to the
contrary. And we think the principle or the teaching of the case is that
the protection given by a copyright on a work of art is not lost by its
double service of displaying its artistic quality while supplying a
practical function of a utility article.  {4}

We discern no possible conflict in these permissible uses of a copyrighted
work of art and appellees' use of their copyrighted statuettes in
connection with an ornamental lamp -- an object widely used in the
decorative qualities of a well-dressed home room.

In Pellegrini v. Allegrini, D.C.E.D.Pa., 1924, 2 F.2d 610, the comparative
qualities of copyrights, design patents, and trademarks and unfair
competition are analyzed and the holding is confined to what degree of
likeness is necessary to infringe a copyright. There is no question in 
the cause as to use of copyrighted "work" as a component part of another
thing, to-wit, a common utility. It holds, however, that it is not
necessary to infringement that the accused work should be a "Chinese Copy"
of the copyrighted work. The doctrine of this case seems to dispel the 
suggestion that the statuettes lose their status as copyrighted objects
when the electric assembly is cast in or mounted upon them.  While the
statuettes with the electric assembly added may be applied to the utility
use as a lamp stand, they continue in their aesthetic use as art. In fact,
with the electric light reflected downward by the usual ornamental shade,
the art is shown to greater advantage.

United States v. Backer, 2 Cir., 1943, 134 F.2d 533, is a figurine copyright 
infringement case involving profit.

We think Judge Dobie in Stein v. Mazer, supra, put the matter most
admirably, 204 F.2d at page 477: "Concededly, a copyright does not purport
to give to the copyrightee any rights to the mechanical or utilitarian
uses of a work of art. A copyright does, however, protect the work of art
qua work of art without regard to any functional use to which it might be
put. A subsequent utilization of a work of art in an article of manufacture
in no way affects the right of the copyright owner to be protected against
infringement of the work of art itself. The critical inquiry, therefore, 
is not whether the particular work sought to be registered has utility
but whether it is a work of art irrespective of its utility."

And Judge Tolin in his opinion in the instant case, Stein v. Rosenthal,
D.C. 1952, 103 F.Supp. 227, 230, brought the principles of copyright
home when he said: "The point, insofar as this case is concerned, is
simply that the copyrighted material is in itself non-utilitarian and
non-mechanical.  Protection is not dissipated by taking an unadulterated
object of art as copyrighted and integrating it into commercially
valuable merchandise. The appropriateness of copyright registration
is determined by the character of the registered work of art as registered
and not by the ability, intent or hope of the registrant to use it as
a dress for a utilitarian object. Copyright protection is not reserved
exclusively to proprietors who do not intend to earn money by
commercialization of their art."

Both Judge Dobie's and Judge Tolin's opinions may be consulted with
profit. Judge Dobie has added applicable regulations promulgated by
the Copyright Office.

We hold that appellants infringed appellee's copyrights. The judgement
is affirmed.


On Motion to Strike

The motion to strike certain portions of the record on the ground that
they had no use in the appeal is denied. Upon reviewing the record it
becomes apparent that appellants and appellees could have cooperated
through their attorneys to materially shorten the record. They did not
do this and we are not prepared to hold that appellants included anything
in their designation which they did not in good faith believe was
necessary in the appeal.


{1} Title 17 U.S.C.A. section 1, July 30, 1947, c. 391, section 1, 61
Stat. 652; derived from section 1 Title 17 U.S.C., 1946 ed. (Act March 4,
1909, c. 320, sections 1, 64, 35 Stat. 1075, 1088), without change; since
amended but without change in the quoted section, July 17, 1952, c. 923,
section 1, 66 Stat. 752.

{2} Title 17 U.S.C.A. section 5, July 30, 1947, c. 391, section 1. 61
Stat. 652; derived from section 5 of Title 17 U.S.C., 1946 ed. (Act March 4,
1909, c. 320, section 5, 35 Stat. 1076; Act Aug. 24, 1912, c. 356, 37 Stat.
488; Act July 31, 1939, c. 396, section 2, 53 Stat. 1142), without change.

{2a}  But cf. Stein v. Benaderet, D.C.E.D. Mich.1952, 109 F.Supp. 364.

{3} Title 35 U.S.C.A. section 73, R.S. sections 4929, 4933; May 2, 1902,
c. 783, 32 Stat. 193; Aug. 5, 1939, c. 450, section 1, 53 Stat. 1212;
R.S. section 4929 derived from Acts July 8, 1870, c. 230, section 71,
16 Stat. 209; June 18, 1874, c. 301. 18 Stat. 78; R.S. section 4933
derived from Act July 8, 1870, c. 230, section 76, 16 Stat. 210; since
amended but without material change in the applicable quoted portion,
Title 35 U.S.C.A. section 171, July 19, 1952, c. 950, section 1, 66 Stat. 805.

{3a}  "Protecting the Artistic Aspects of Articles of Utility: Copyright
or Design Patent?" 66 Harv.L.R. 877, note 31, p. 882.

{4} On this point the following cases are cited in the Court of Appeals'
opinion in Stein v. Expert Lamp Co., 7 Cir., 1951, 188 F.2d 611, at
page 613 [4-6]; Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841; Kemp & Beatley 
v. Hirsch, D.C., 34 F.2d 291; ef. Gorham Mfg. Co. v. White, 14 Wall. 511,
20 L.Ed. 731; and Taylor Instrument Companies v. Fawley-Brost Co.,
7 Cir., 139 F.2d 98.