Friday, March 13, 2015

Invoking IP: More Useful Article Exceptions

Today we[1]’ll return to the distinction between copyrightable art and non-copyrightable useful articles.  Today’s case relates to the production of mannequin heads.  But, I’m getting ahead of myself.  A brief review of copyright law is that it exists to protect the expression of individual ideas.  The ideas themselves cannot be copyrighted (though they might be patentable if they are novel and useful).  If they are copyrightable, they cannot be industrial articles (today called useful articles).  Useful articles aren’t protected by copyright—at least the portion of whatever’s being copyrighted that is useful isn’t subject to copyright.  It might be that a work has both useful/functional components and decorative/expressive ones.  The decorative/expressive parts might still be protected.  This has been going on since the Copyright Office started allowing some protection for three-dimensional “works of artistic craftsmanship insofar as their form but not their utilitarian aspects are concerned” in 1948.  Basically, the flowchart goes:

      1)      Is it a work of art generally subject to copyright?
2)      If yes, does it serve a function beyond expression of an idea?
3)      If yes, can the expressive portions of the article be physically or conceptually severed[2] from its useful part(s)?

This is the first picture that comes up
from a Google image search for "Hosrt
Heerlein".  It was so ridiculous, I'm
adding it to this poist.
 Today’s case is Pivot Point International, Inc. v. Charlene Products, Inc.[3] It’s similar to the issues raised in Fabrica, but here the items in question are mannequin heads.  Very special mannequin heads.  Here’s what happened.  One company decided to build “a mannequin that would imitate the ‘hungry look’ of high-fashion runway models.”[4]  To do so, they “worked with a German artist named Horst Heerlein to create an original sculpture of a female human head.”[5]  Together the company executives and Heerlein named this creature Mara.  Heerlein also copyrighted Mara and then assigned his copyright to the company, Pivot Point.  The company hired a factory in Hong Kong to create lots of copies of Mara and they did so.  Business was great. 

Mara was so successful that Pivot Point “began marketing the Mara mannequin with different types and lengths ofhair, different skin tones and variations in makeup.”[6]  Yay diversity!  They had one with yak hair (Sonja) and one with blonde hair (Karin).  Then, one of their employees, Peter Yau, decided to go into business for himself doing the exact same thing.  He founded Charlene Products and started producing runway model-style mannequin heads.  Not only did they look an awful lot like Pivot Point’s mannequin heads, they even had an accidental higher hairline that had appeared on the earliest versions of Mara.

So, it’s pretty clear that Charlene Products straight up copied Mara.  Pivot Point sues for copyright infringement.  They’ve registered the copyright and it was approved.  Charlene Products says, “Wait a second, partner!  Your mannequin heads aren’t expressive and so they don’t deserve copyright protection.  And, even if they are a little bit expressive, we don’t allow functional items to be copyrighted.  We can copy Mara all we want.”  Which brings us to the questions for today.
1)      Can you copyright a mannequin head?
2)      If you can copyright a mannequin head, does its usefulness to hair styling trainees render it ineligible for copyright due to its commercial applications beyond expression?
3)      If there are some uncopyrightable elements of a mannequin head, can they be severed from the mannequin head, leaving a mannequin head piece of art that’s purely expressive?

This case is actually written to be incredibly user friendly.  If you have to read a case, Judge Ripple does a great job in making the law clear.  It’s tough to say whether or not he applies it clearly as this is one of the most complicated and subjective areas in jurisprudence anyway.  The district court found that Mara wasn’t subject to copyright at all.  Everybody appealed.

Judge Ripple first gives us some relevant law to love:

“Pictorial, graphic, and sculptural works” include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.[7]

Also, “a “useful article” is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.[8] An article that is normally a part of a useful article is considered a “useful article”.[9]  So, Pivot Point says, “Of course Mara is subject to copyright.  Her purpose is to portray the hungry-look of runway models.”  Charlene Products disagrees.  Clearly Mara’s primary purpose is as a tool for hair and makeup styling students.

This is truly bizarre taxidermy too.
There are two cases on point related to mannequins and copyright.  In Carol Barnhart, Inc. v. Economy Cover Corp., the Second Circuit found that generic human mannequins were useful articles and therefore not subject to copyright protection.[10]  In a truly bizarre case relating to the copyright status of taxidermy, the Fourth Circuit found that mannequins of fish and animals were subject to copyright because, “none of the expressive aspects of a mannequin is lost by covering the mannequin with a skin.”[11]  This case is in the Seventh Circuit though, so it doesn’t have to listen to what the two Circuit Courts in consideration did.[12]

The Seventh Circuit pretty quickly decided that Mara was a three-dimensional work entitled to copyright.[13]  They similarly decided that she was a useful article.  Here’s where things get fun.  Now the court has to decide whether there are severable parts that have differing copyright statuses or if the expressive function is so pervasive that it cannot be severed from the utilitarian function.

There are two tests: physical severability or conceptual severability.  Physical severability is easy, can the artistic material be separated physically from the industrial design fulfilling a purpose?[14]  This isn’t hard for a three-dimensional object, but could get tricky with a two-dimensional one like a book.  Fortunately, wary of their decisions’ effects on their inferior courts, the Seventh Circuit takes this into account.

What about conceptual severability?  The court considers several tests.  Artistic and utilitarian aspects are conceptually severable when:
1)      The artistic features are “primary” and the utilitarian features are “subsidiary;”
2)      The useful article “would still be marketable to some significant segment of the community simply because of its aesthetic qualities;
3)      The article “stimulates in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function;”
4)      The artistic design was not significantly influenced by functional considerations;
5)      The artistic features “can stand alone as a work of art traditionally conceived and the useful article in which [that conception] is embodied would be equally useful without it;” and
6)      The artistic features are not utilitarian.

The court then takes us on a long trip down useful article memory lane, discussing just about every case that has considered it in the 2nd Circuit.[15]  They then develop an amalgamated test:

Conceptual severability exists, therefore, when the artistic aspects of an article can be “conceptualized as existing independently of their utilitarian function.”  This independence is necessarily informed by “whether the designer’s artistic judgment exercised independently of the functional influences.  If the elements do reflect the independent, artistic judgment of the designer, conceptual severability exists.  Conversely, when the design of a useful article is “as much the result of utilitarian pressures as aesthetic choices,” the useful and aesthetic elements are not conceptually separable [and therefore no copyright attaches to the aesthetic/expressive/artistic element].

So, Mara gets copyright protection.  Why does she get copyright protection?  Basically, because Pivot Point gave Heerlein free rein to design his sculpture that was the model for Mara.  Mara is a specific person with a specific image.  That’s conceptually separate from a head mannequin whose hair and makeup can be done.  That head mannequin could look like any person so long as it had hair and makeup could be applied to it.

So, what have we learned on our quest for RPG copyright?  Useful articles do not receive copyright protection.  The artistic portions of useful articles need to be physically or conceptually separable from their functional designs in order to qualify for protection.  Physical severability isn’t much help in books.  Conceptual severability is going to be the key for RPG rulebooks.[16]  What is the concept that RPG rulebooks are trying to convey?  They are trying to express a set of rules used for playing a game that simulates reality.  What does the art in RPG rulebooks do?  It expresses the feelings related to a particular scene.  The art evokes feelings and might even be depicting what the text is describing.  For instance, the ‘combat’ and ‘magic’ chapters of RPG rulebooks generally feature people fighting with weapons or casting spells, respectively.  But, removed from the book, does the artwork continue to fulfill an expressive purpose?  You betcha!  So, it’s physically separable.  Conceptually, can the rulebook convey the rules without the art?  It can.  Therefore, there’s both physical and conceptual severability here.  Art in rulebooks is protected.

The picture of a Wayfinder from this page in
Paizo's Inner Sea World Guide could be removed
from the book and still be expressive.  It's
physically severable.  Used with Permission.

But what about miniatures?  A miniature in a game is a sculpture (interpreted broadly) and therefore subject to copyright.  But, it also fulfills the function of representing a character at the table.  Can you physically separate the two?  Maybe you could remove the miniature’s base, rendering it totally a sculpture.  That would also remove any information relating to its stated purpose to be used as a miniature.  Conceptually, could the utility and the expression of a miniature be separated?  The art is the individualized expression.  The concept is representing the character.  In Pivot Point, the case turned on whether or not any mannequin face with hair would have been sufficient to convey the idea of a person that could be practiced upon. 
Khygar's case for conceptual severability is good under the
Pivot Point test.  It might not be as clear cut a case if he
had to live under precedents in other Circuits.
 Here, the idea is just to represent the character.  Consider my mini for my dwarven fighter, Khygar.  I chose this miniature because it features a male dwarf holding a warhammer.  Despite what you might think, it’s actually difficult to find a dwarf miniature holding a hammer (though minis with axes, unsurprisingly, abound).  I chose this mini specifically because it featured the features I imagine my character as having.  But, that’s just the best representation for Khygar.  He could just as easily be represented by a 12-sided die.  It wouldn’t be as fun, but it would get the concept of “your character is in this space on the battlemat” across.  I think the two can be conceptually severed.  Consider this video.  Since they can be severed, the copyright applies to the expressive work.

So, ultimately, it looks like both miniatures and RPG rulebooks can conceptually sever.  This standard for conceptual severability is pretty weak—as the dissent in the case noted.  With a higher bar for conceptual severability though, RPG miniatures might be freely copyable!

[1] Pivot Point Intern., Inc. v. Charlene Products, Inc., 372 F.3d 913, 920 n6 (2004).
[2] Those hip to the legal trade no doubt know that this is where the mean of the discussion comes in.  “Conceptually severable” just screams, “I am legalese!”
[3] 372 F.3d 913 (7th Cir. 2004).
[4] Id. at 915.
[5] Id.
[6] Id. at 915-16.
[7] 17 U.S.C. § 101 (2012) (emphasis original).
[8] Underlined portion raises interesting questions for RPG rulebooks.  Is their primary function to convey information?  If they are subject to copyright, are they then out again because they are useful articles?  The underlined portion tends to militate against finding them to be useful articles if they are subject to copyright in the first place.
[9] 17 U.S.C. § 101 (2012).
[10] 773 F.2d 411 (2d Cir. 1985).
[12] That’s called persuasive authority because it can be persuasive to say, “See, somebody already looked at this issue and they agreed with me.  You should too and here’s why.”  That’s opposed to binding authority which is when a superior court has made a decision on an issue.  Once a superior court has made a decision, all of its inferior courts are bound by that decision.  But, when you are a federal appellate court, there’s only one superior court to you and the Supremes haven’t considered the useful article doctrine in a loooooong time.
[13] Minus one dissenter.
[14] Mazer v. Stein, 347 U.S. 201 (1954).
[15] People often look to cases in the 2nd and 9th Circuits as more persuasive authority in matters of intellectual property law if only because so much of it happens in California and New York.
[16] Leaving aside for the moment, as Judge Kanne’s dissent in Pivot Point did, the issue of whether or not RPG rulebooks qualify for the first threshold of copyright protection even before we come to the useful article question.  372 F.3d at 932.