10/23/2007 10:58:00 AM
Brandir International v Cascade Pacific Lumber, U.S. Ct. of App., 2nd Circuit, 1987, p. 407
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Ribbon bike rack case
Facts –
o David Levine, owner of Brandir, creates wire sculptures; they were created
ostensibly for artistic purposes (displayed in his home), and not sold.
o At one point, he’d created a bicycle sculpture, and accidentally juxtaposed it
w/one of his other works (ostensibly the ribbon sculpture). A bike buff friend
told him that the ribbon sculpture would be a great bike rack.
o The Brandir RIBBON rack hit the market in September 1979.
o In November 1982 Levine found Cascade Pacific Lumber selling a similar
rack. Levine reacted by putting a copyright sign on all his racks manufactured
from then on.
o Levine submitted applications for registration of the rack to the Copyright
Office; the Office denied registration saying no element of them was “capable
of independent existence as a copyrightable pictorial, graphic, or sculptural
work” (p. 410). Appeal to Copyright Office also denied.
o Register of copyright denied copyrightability; U.S. Dist. Ct., S.D.N.Y. granted
summary judgment (we assume against copyrightability).
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Question – Is the bike rack copyrightable?
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Ruling – No, it’s not.
Reasoning –
o Works of applied art are copyrightable; industrial designs are not.
 Importance of physical or conceptual separation between elements of
the work.
o Denicola test on conceptual separability:
 “If design elements reflect a merger of aesthetic and functional
considerations, the artistic aspects of a work cannot be said to be
conceptually separable from the utilitarian aspects. Conversely, where
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design elements can be identified as reflecting the designer’s artistic
judgment exercised independently of functional influences, conceptual
separability exists” (p. 409).
Applying the Denicola test, there is no copyright. Although the
sculptures that inspired the rack might be copyrightable, the rack itself
is influenced in significant measure by utilitarian concerns, making
any aesthetic elements impossibly to separate from those conceptually
(p. 410).
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The court found that had Brandir just used an existing sculpture
as a bike rack, that would by copyrightable. The problem was
that Brandir had only derived the rack from earlier sculptures,
making its final form one of industrial design (p. 411).
o In summary (p. 411) “there remains no artistic element of the RIBBON rack
that can be identified as separate and ‘capable of existing independently of,
the utilitarian aspects of the article’.”
Brandir v. Cascade Pacific Lumber, Class Notes
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Covered already copyrightable subject matter; works of art are copyrightable
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What about industrial design, art that also has an aesthetic dimension?
Central element of copyright is creative expression, that modicum of originality
Copyright inures not the function of something, but to its expressive/aesthetic
elements
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For the bike rack, with both a functional and aesthetic dimension, is there a
copyright?
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What it means to be uninhibited by functional consideration
o Denicola test – physical and conceptual separability
 If design elements reflect a merger, the aesthetic elements can’t be
separable from functional considerations
o When you can separate, there can be copyright
o When you can’t, have to examine conceptual separability
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Question – is there conceptual separability?
o Doesn’t matter that it’s art; doesn’t matter if it’s commercial
o Question is whether the design is the result of the function
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Answer – Yes, the design/shape was changed for functional, not aesthetic,
considerations
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Answer hinges on the historical accident of when the artist made the changes to the
sculpture – if he’d changed the shape earlier (while still sculpting) rather than later,
there would have been copyright
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Criticized for undervaluing industrial design and its importance for the functional
objects we used
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Takeaways
o Copyrightable are only those elements that are independent of the utilitarian
aspects of the article
o Have to do the analysis, explain why there’s either physical or conceptual
separability, allowing you to identify the expressive element as separate from
the functional object itself
o So, industrial design is copyrightable – but, just the expressive elements of it
 Overall, case is somewhat criticized for decision and reasoning
How to apply Denicola test – not necessarily a 2-part test, just looking at physical separability
first, then conceptual separability, would work (being able to physically separate something
would bring you directly to conclusion, w/o having to consider conceptual separability). (Start
w/the easy test, then move onto the hard one.)
p. 413 Note 3
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Goldstein test
All these tests are reformulations of the same idea; you just want to apply the
principle – what is the aesthetic vs. the functional nature of the work?
n.b. Can get all three forms of IP protection for design – ™, ©, and Patent
Ownership/Works for Hire
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Rights vest with individual author upon creation
Rights vest with corporate author upon publication
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What about an individual employee or a consultant creating for a corporation?
Basic rule of copyright – rights vest w/individual author upon creation and fixation of the work
When there’s a corporate author – a company, done by a group of people working for a
company, etc – rights vest with publication of that work
Default rule – entity/person who creates the work owns the copyright
What happens when you're working for someone else?
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Ex – wedding photographer, who owns the work?
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Ex – if someone working as an assistant professor here makes a documentary video
while at work?
Statute – §101(1) and §101(2)
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Generally speaking, author owns the work; in cases of work for hire, ownership will
vest not in individual but in commissioning entity – person for whom the work was
made
o §101(1) – work prepared by an employee within the scope of employment
o §101(2) – nine specified categories of commissioned works
 Contribution to a collective work
 Part of motion picture or other audiovisual work
 Translation
 Supplementary work
 Compilation
 Instructional text
 Test
 Answer material for a test
 Atlas
o In this case (§101(2)), work will be owned by person doing the
commissioning
Community for Creative Non-Violence (CCNV) v Reid, Supreme Court, 1989, p. 431
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Homeless nativity sculpture case
Facts – CCNV is a nonprofit for homelessness, participating in a pageant in
Washington for which they want to sponsor a display.
o CCNV brainstormed an idea of a homeless family depicted on top of a steam
grate
o CCNV got James Earl Reid, a Baltimore resident, to sculpt the three humans
depicted in the sculpture. Reid would cast the three in Design Cast 62, an
alternative to bronze. He wouldn’t charge for his services, and CCNV
promised to pay $15k for materials. There was no written contract.
o While sculpting, Reid and CCNV consulted back and forth – CCNV taking
Reid on a tour of Washington streets, Reid suggesting certain elements (i.e.
the family holding suitcases) and CCNV insisting on others (suitcase idea was
scrapped for a shopping cart).
o After its exhibit in Washington, CCNV wanted to take the sculpture on a
national tour; Reid objected, saying the sculpture was too fragile. Reid
proposed alternative casting ideas, costing between $5k and $35k. CCNV
rejected these proposals.
o Reid in turn filed a certificate of copyright registration in his name and
announced plans for his own national tour.
o CCNV replied by filing their own certificate of copyright registration.
o CCNV is suing Reid for return of the sculpture and copyright ownership.
o The District Court granted a preliminary injunction, ordering the sculpture to
be returned; they later ruled in favor of CCNV and said Reid was their
employee under 17 USC §101(1). The Court of Appeals, DC Circuit,
reversed.
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Question –
o Does CCNV own the copyright to the sculpture?
o At the time he was sculpting, was Reid an employee of CCNV’s under
§101(1)?
 What does “employee” (and, in turn, a work prepared by an employee)
mean under this statute?
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Ruling – Easily ruled out application of §101(2).
o No, CCNV doesn’t own the copyright; Reid owns the copyright to the
sculpture.
o Reid was not an employee of CCNV under §101(1).
 Under §101(1), “employee” is one under the common law agency
definition.
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Reasoning –
o Four theories advanced on §101(1)/question of whether a work was prepared
by an employee (p. 434)?
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When hiring party retains right to control the product.
When hiring party wields control w/respect to creation of the work.
In the presence of a master-servant relationship (p. 435); i.e., the
common law agency meaning.
 Only when it was a formal, salaried employee.
o Only the common law agency meaning made sense (p. 435).
o Process of statutory interpretation followed: language of the statute comes
first; where Congress doesn’t define a word, the established meaning is
inferred unto it.
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Application – past uses of “employee” without an accompanying
definition were determined to have the dfn of the conventional masterservant relationship under common law.
Rule/Learnings
o Rule – copyright rests in the employer (or other person for whom the work
was prepared) in the case of works made for hire.
 Why is ‘for hire’ so important? If a work is made for hire, initial
ownership, duration, the right of the owner to renew the copyright, to
terminate it, and to import goods with the copyright on them is
determined.
o Rule/17 USC §101 – two ways of having a work be ‘for hire’
 Prepared by employee w/i scope of employment
 Specially ordered or commissioned | for use as |
 Contribution to a collective work
 Part of motion picture or other audiovisual work
 Translation
 Supplementary work
 Compilation
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 Instructional text
 Test
 Answer material for a test
 Atlas
IF parties expressly agree that it will be a work made for hire in
writing
CCNV v. Reid, Class Notes
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Reid commissioned to make a sculpture for Christmas pageant, depicting plight of the
homeless
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No contract, written agreement
No discussion of copyright in discussions between CCNV and Reid
CCNV wants to do the roadshow; debate over who owns the sculptures (Reid, at time
of dispute, had physical possession)
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Reid files certificate of copyright registration
CCNV goes and files competing certificate
Question – who is the author of the work?
o Reid, creator and fixator
o CCNV, commissioner and brought the ideas
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Either falls under prong 1 or 2; prong 2 ruled out
CCNV saying it falls under prong 1, a work prepared under scope of employee’s
employment
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Dispositive inquiry (p. 434) is, what is the meaning of a work being prepared by an
employee under the scope of his employment?
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Court resolving disputes among various circuits
4 options
o Includes only formal salaried employees on the job
o Common law agency meaning of ‘employee’
 Endorsed by 5th circuit
o Hiring party retains right to control
o Hiring party actually wields control
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How to choose correct dfn – statutory interpretation
Conclude that it’s the broader understanding of ‘employee’, not meaning W2, but the
scope of employment under common law agency dfn of ‘employee’
o ‘Scope of the employment’ – term of art defined by agency law
o p. 436, 1st ¶ – right to control the manner/means by which the product is
accomplished; list of elements follows
o Not just about control over artistic product, about factors that determine
whether you’re an employee or independent contractor
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Application – is Reid an employee or independent contractor?
o Reid possesses the skill to make the work; has the tools necessary to sculpt;
doing it in his own studio; short duration of the relationship; CCNV can’t
force Reid to take on any add’l work – no obligation by Reid to do so; Reid
can choose when he works; methods of payment; Reid controls everything
about how the project is executed; whether hiring party is in business – this
isn’t CCNV’s regular course of business, just a one-off project
o Copyright vests w/Reid
o But case not totally settled – prospect of joint authorship
 CCNV gave him many ideas of the design
 Created w/intention of merging two works (Reid’s figures w/CCNV’s
pedestal/base for the sculpture, and steam generator)
o For purposes of work made for hire, there is none
Work Made for Hire
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Exception to the fundamental principle that copyright ownership vests initially in the
individual who creates the work
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If work made for hire, then the employer will be the owner (“pre-assignment”)
Two-pronged approach
o Employee (common law agency dfn – not just a W2, but may be someone
who, from a tax perspective, is an independent contractor and just filling very
specified condition)
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In contracts, you usually see a specific clause stating the relationship
of the parties
o Independent contractor, fulfilling specified conditions
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Contracting around the doctrine
o Can just have a contract saying who owns the work, regardless of what the
statute says
Exclusive Rights of Copyright Owners
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Reproduce the work
Prepare derivative works
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Distribute copies or phono-records
Perform the work
Display the work publicly
Transmit sound recording digitally
If you assign something, the original owner (or their estate) reserves the right to terminate the
assignment between years 35 and 40 of the grant.
What it means to possess these rights? i.e., what happens when there is infringement?
Right to reproduce the work – §106(1)
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Right to prevent others from making exact or “substantially similar” reproductions
Law prevents copying but not independent creation
How to prove copying?
o Direct proof – an admission
o Circumstantial evidence
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Must have substantial copying – not enough to copy one word or one note
Lay person test – what the ordinary listener/observer/juror would think, not the
artistic expert
General principles of the right of reproduction
Arnstein v. Porter, Class Notes (Discussed briefly, in preparation for Thursday)
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Songs at issue
o Begin the Beguine
 The Lord is My Shepherd, Mother’s Prayer
o My Heart Belongs to Daddy
 A Mother’s Prayer
o Night and Day
 I Love You Madly
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At issue isn’t an exact reproduction, but a substantially similar copying accused of
constituting improper appropriation
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Test of infringement for copying
o Copying
 Did defendant copy from plaintiff’s copyrighted work?
 Admission
 Circumstantial evidence
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ACCESS – was there access to the work? An
opportunity to copy? Song on the radio? Did infringer
have access to it?
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SIMILARITY – is there enough similarity between the
works to infer that there must/might have been access?
o Improper appropriation
 Assuming there was copying, did it constitute improper appropriation?
 Ordinary Lay Hearer Test (“caviar to the general”)
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Here, there was potential opportunity for access
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Similarity? Enough to suggest there may have been access?
The two hang together – the greater the access, the less you need to prove similarity;
the less access, the more similarity you have to prove
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Looking for the smoking gun, the evidence of access, in order to proceed w/the next
inquiry
o Here, access could have been possible
o Trial therefore should proceed to allow a jury to determine facts
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If copy, did it constitute appropriation? Some copying is okay, that doesn’t rise to the
level of actionable copying.
o How to determine? If there is quantitatively and qualitatively enough to
support the conclusion of infringement.
o Simply the determination of the lay hearer test; p. 462 at bottom ¶, ‘caviar to
the general’
 Not a test of musical reputation, but of financial loss – is the person
who would have bought the other record going out instead and buying
Porter’s music? Is financial opportunity lost b.c. there’s such a great
degree of copying?
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Conclusion that it’s an issue of fact to be determined by a jury
Can bring in extrinsic/expert evidence
If there were 0 similarity, no amount of evidence of access would suffice to prove
copying
Levels of abstraction pyramid
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What is improper appropriation?
o Not looking just for literal copying
o Could be copying expression – plot, character, theme – also could be improper
o There’s a line, when you cross over from expression into idea – something
that is no longer the original creation of the author
10/23/2007 10:58:00 AM
10/23/2007 10:58:00 AM