Kiselstein

BARRY KIESELSTEIN-CORD v. ACCESSORIES BY PEARL, INC.

UNITED STATES COURT OF APPEALS, SECOND CIRCUIT
632 F.2d 989 (1980)
(Edited, with paragraph numbers added for Class use)
JUDGES: OAKES and VAN GRAAFEILAND, Circuit Judges, and WEINSTEIN, District Judge (of the Eastern District of New York, sitting by designation).

OPINION (Judge Oakes):

1. This case is on a razor's edge of copyright law. It involves belt buckles, utilitarian objects which as such are not copyrightable. But these are not ordinary buckles; they are sculptured designs cast in precious metals-decorative in nature and used as jewelry is, principally for ornamentation. We say "on a razor's edge" because the case requires us to draw a fine line under applicable copyright law and regulations. Drawing the line in favor of the appellant designer, we uphold the copyrights granted to him by the Copyright Office and reverse the district court's grant of summary judgment in favor of the appellee, the copier of appellant's designs.

2. FACTS

3. Appellant Barry Kieselstein-Cord designs, manufactures exclusively by handcraftsmanship, and sells fashion accessories. To produce the two buckles in issue here, the "Winchester" and the "Vaquero," he worked from original renderings which he had conceived and sketched. He then carved by hand a waxen prototype of each of the works from which molds were made for casting the objects in gold and silver. Difficult to describe, the buckles are solid sculptured designs, in the words of district court Judge Goettel, "with rounded corners, a sculpted surface, a rectangular cut-out at one end for the belt attachment," and "several surface levels." The Vaquero gives the appearance of two curved grooves running diagonally across one corner of a modified rectangle and a third groove running across the opposite corner. On the Winchester buckle two parallel grooves cut horizontally across the center of a more tapered form, making a curving ridge which is completed by the tongue of the buckle. A smaller single curved groove flows diagonally across the corner above the tongue.

4. The Vaquero buckle, created in 1978, was part of a series of works that the designer testified was inspired by a book on design of the art nouveau school and the subsequent viewing of related architecture on a trip to Spain. The buckle was registered with the Copyright Office by appellant's counsel on March 3, 1980, with a publication date of June 1, 1978, as "jewelry," although the appellant's contribution was listed on the certificate as "original sculpture and design." Explaining why he named the earlier buckle design "Winchester," the designer said that he saw "in (his) mind's eye a correlation between the art nouveau period and the butt of an antique Winchester rifle" and then "pulled these elements together graphically." The registration, which is recorded on a form used for works of art, or models or designs for works of art, specifically describes the nature of the work as "sculpture."

5. The Winchester buckle in particular has had great success in the marketplace: more than 4,000 belts with Winchester buckles were sold from 1976 to early 1980, and in 1979 sales of the belts amounted to 95% of appellant's more than $ 300,000 in jewelry sales. A small women's size in silver with "double truncated triangle belt loops" sold, at the time this lawsuit commenced, at wholesale for $ 147.50 and a larger silver version for men sold at wholesale with loops for $ 662 and without loops for $ 465. Lighter-weight men's versions in silver wholesaled for $ 450 and $ 295, with and without loops respectively. The gold versions sold at wholesale from $ 1,200 to $ 6,000. A shortened version of the belt with the small Winchester buckle is sometimes worn around the neck or elsewhere on the body rather than around the waist. Sales of both buckles were made primarily in high fashion stores and jewelry stores, bringing recognition to appellant as a "designer." This recognition included a 1979 Coty American Fashion Critics' Award for his work in jewelry design as well as election in 1978 to the Council of Fashion Designers of America. Both the Winchester and the Vaquero buckles, donated by appellant after this lawsuit was commenced, have been accepted by the Metropolitan Museum of Art for its permanent collection.

6. As the court below found, appellee's buckles "appear to be line-for-line copies but are made of common metal rather than" precious metal. Appellee admitted to copying the Vaquero and selling its imitations, and to selling copies of the Winchester. Indeed some of the order blanks of appellee's customers specifically referred to "Barry K Copy," "BK copy," and even "Barry Kieselstein Knock-off." Thus the only legal questions for the court below were whether the articles may be protected under the copyright statutes and, if so, whether the copyrights were adequate under the laws. ...

7. DISCUSSION

8. ... The thrust of appellee's argument, as well as of the court's decision below, is that appellant's buckles are not copyrightable because they are "useful articles" with no "pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects" of the buckles. ...

9. Appellee argues that the belt buckles are merely useful objects, which include decorative features that serve an aesthetic as well as a utilitarian purpose. And the copyright laws, appellee points out, were never intended to nor would the Constitution permit them to protect monopolies on useful articles. But appellee goes too far by further arguing that "copyrightability cannot adhere in the "conceptual' separation of an artistic element." Brief for Defendant-Appellee at 17. This assertion flies in the face of the legislative intent as expressed in the House Report, which specifically refers to elements that "physically or conceptually, can be identified as separable from the utilitarian aspects of" a useful article. House Report at 55, (1976) U.S. Code Cong. & Admin.News at 5668.

10. We see in appellant's belt buckles conceptually separable sculptural elements, as apparently have the buckles' wearers who have used them as ornamentation for parts of the body other than the waist. The primary ornamental aspect of the Vaquero and Winchester buckles is conceptually separable from their subsidiary utilitarian function. This conclusion is not at variance with the expressed congressional intent to distinguish copyrightable applied art and uncopyrightable industrial design, House Report at 55, (1976) U.S. Code Cong. & Admin.News at 5668. Pieces of applied art, these buckles may be considered jewelry, the form of which is subject to copyright protection.

11. Appellant's designs are not, as the appellee suggests in an affidavit, mere variations of "the well-known western buckle." As both the expert witnesses for appellant testified and the Copyright Office's action implied, the buckles rise to the level of creative art. Indeed, body ornamentation has been an art form since the earliest days, as anyone who has seen the Tutankhamen or Scythian gold exhibits at the Metropolitan Museum will readily attest. The basic requirements of originality and creativity, which the two buckles satisfy and which all works of art must meet to be copyrighted, would take the vast majority of belt buckles wholly out of copyrightability. The Copyright Office continually engages in the drawing of lines between that which may be and that which may not be copyrighted. It will, so long as the statute remains in its present form, always be necessary to determine whether in a given case there is a physically or conceptually separable artistic sculpture or carving capable of existing independently as a work of art.

12. We reverse the grant of summary judgment to the appellee and remand the case for consideration of whether appellant has satisfied the copyright notice requirements.

13. WEINSTEIN, District Judge (dissenting):

14. The trial judge was correct on both the law and the facts for the reasons given in his excellent opinion holding that plaintiff was not entitled to copyright protection. The works sued on are, while admirable aesthetically pleasing examples of modern design, indubitably belt buckles and nothing else; their innovations of form are inseparable from the important function they serve-helping to keep the tops of trousers at waist level.

15. The conclusion that affirmance is required is reached reluctantly. The result does deny protection to designers who use modern three-dimensional abstract works artfully incorporated into a functional object as an inseparable aspect of the article while granting it to those who attach their independent representational art, or even their trite gimmickry, to a useful object for purposes of enhancement. Moreover, this result enables the commercial pirates of the marketplace to appropriate for their own profit, without any cost to themselves, the works of talented designers who enrich our lives with their intuition and skill. The crass are rewarded, the artist who creates beauty is not. All of us are offended by the flagrant copying of another's work. This is regrettable, but it is not for this court to twist the law in order to achieve a result Congress has denied.

16. Both of appellant's designs may be described as rough geometric shapes with uneven surfaces, one of them having two wavy lines in the corner. These arrangements are embodied within a useful article a belt buckle. They transform the ordinary square buckle with each of its sides of equal width, and a narrow tongue attached to one side into a four sided structure with sides of unequal thickness and the usual narrow tongue. The artist has enhanced the appearance of the buckles by rendering their shape aesthetically pleasing without interfering with function. It is the originator's success in completely integrating the artistic designs and the functional aspects of the buckles that preclude copyright.

17. The 1976 Copyright Act protects only those portions of useful articles, such as belt buckles, consisting of "sculptural features that can be identified separately from, and are capable of existing independently of the utilitarian aspects of the article." ...

18. While the distinction is not precise, the courts, both before and after Mazer, have tried to follow the principle of the copyright act permitting copyright to extend only to ornamental or superfluous designs contained within useful objects while denying it to artistically designed functional components of useful objects. Generally they have favored representational art as opposed to non-representation artistic forms which are embodied in, and part of the structure of, a useful article. ... The relative certainty that has developed in this area of the law should not be disturbed absent some compelling development and none has thus far been presented. ...

19. Important policies are obviously at stake. Should we encourage the artist and increase the compensation to the creative? Or should we allow cheap reproductions which will permit our less affluent to afford beautiful artifacts? Appellant sold the original for $ 600.00 and up. Defendant's version went for one-fiftieth of that sum.

20. Thus far Congress and the Supreme Court have answered in favor of commerce and the masses rather than the artists, designers and the well-to-do. Any change must be left to those higher authorities. The choices are legislative not judicial.