In the
`United States Court of Appeals
`For the Seventh Circuit
`____________
`
`Nos. 01-3888 & 02-1152
`PIVOT POINT INTERNATIONAL, INCORPORATED,
`Plaintiff-Appellant, Cross-Appellee,
`v.
`
`CHARLENE PRODUCTS, INCORPORATED and PETER YAU,
`Defendants-Appellees, Cross-Appellants.
`
`____________
`Appeals from the United States District Court
`for the Northern District of Illinois, Eastern Division.
`No. 90 C 6933—Frank H. Easterbrook, Circuit Judge.
`____________
`ARGUED JUNE 6, 2003—DECIDED JUNE 25, 2004
`____________
`
`1
`
`Before RIPPLE, KANNE and DIANE P. WOOD, Circuit Judges.
`RIPPLE, Circuit Judge. Pivot Point International, Inc.
`(“Pivot Point”), brought this cause of action against
`Charlene Products, Inc., and its president Peter Yau (col-
`
`1 United States Circuit Judge for the Seventh Circuit, sitting by
`designation.
`
`

`
`2
`
`Nos. 01-3888 & 02-1152
`
`lectively “Charlene”), for copyright infringement pursuant
`to 17 U.S.C. § 501(b). The district court granted summary
`judgment for the defendants on the ground that the copied
`subject matter, a mannequin head, was not copyrightable
`under the Copyright Act of 1976 (“1976 Act”), 17 U.S.C.
`§ 101 et seq. For the reasons set forth in the following
`opinion, we reverse the judgment of the district court
`and remand the case for proceedings consistent with this
`opinion.
`
`I
`BACKGROUND
`
`A. Facts
`Pivot Point develops and markets educational techniques
`and tools for the hair design industry. It was founded in
`1965 by Leo Passage, an internationally renowned hair de-
`signer. One aspect of Pivot Point’s business is the design
`and development of mannequin heads, “slip-ons” (facial
`forms that slip over a mannequin head) and component hair
`pieces.
`In the mid-1980s, Passage desired to develop a mannequin
`that would imitate the “hungry look” of high-fashion,
`runway models. Passage believed that such a mannequin
`could be marketed as a premium item to cutting-edge hair-
`stylists and to stylists involved in hair design competitions.
`Passage then worked with a German artist named Horst
`Heerlein to create an original sculpture of a female human
`head. Although Passage discussed his vision with Heerlein,
`Passage did not give Heerlein any specific dimensional
`requirements. From Passage’s description, Heerlein created
`a sculpture in plaster entitled “Mara.”
`
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`Nos. 01-3888 & 02-1152
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`3
`
`Wax molds of Mara were made and sent to Pivot Point’s
`manufacturer in Hong Kong. The manufacturer created
`exact reproductions of Mara in polyvinyl chloride (“PVC”).
`The manufacturer filled the PVC form with a liquid that
`expands and hardens into foam. The process of creating the
`Mara sculpture and of developing the mannequin based on
`the sculpture took approximately eighteen months.
`In February of 1988, when Pivot Point first inspected the
`PVC forms of Mara, it discovered that the mannequin’s
`hairline had been etched too high on the forehead. The
`manufacturer corrected the mistake by adding a second,
`lower hairline. Although the first, higher hairline was vis-
`ible upon inspection, it was covered with implanted hair.
`The early PVC reproductions of Mara, and Pivot Point’s first
`shipment of the mannequins in May of 1988, possessed the
`double hairlines.
`About the same time that it received its first shipment of
`mannequins, Pivot Point obtained a copyright registration
`for the design of Mara, specifically the bareheaded female
`human head with no makeup or hair. Heerlein assigned all
`of his rights in the Mara sculpture to Pivot Point. Pivot Point
`displayed the copyright notice in the name of Pivot Point on
`each mannequin.
`Pivot Point enjoyed great success with its new mannequin.
`To respond to customer demand, Pivot Point began market-
`ing the Mara mannequin with different types and lengths of
`hair, different skin tones and variations in makeup; how-
`ever, no alterations were made to the facial features of the
`mannequin. For customer ease in identification, Pivot Point
`changed the name of the mannequin based on its hair and
`skin color; for instance, a Mara mannequin implanted with
`yak hair was called “Sonja,” and the Mara mannequin
`implanted with blonde hair was called “Karin.”
`
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`4
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`Nos. 01-3888 & 02-1152
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`At a trade show in 1989, Charlene, a wholesaler of beauty
`products founded by Mr. Yau,2 displayed its own “Liza”
`mannequin, which was very close in appearance to Pivot
`Point’s Mara. In addition to the strikingly similar facial
`features, Liza also exhibited a double hairline that the early
`Mara mannequins possessed.
`On September 24, 1989, Pivot Point noticed Charlene for
`copyright infringement. When Charlene refused to stop
`importing and selling the Liza mannequin, Pivot Point filed
`this action.3
`
`B. District Court Proceedings
`Pivot Point filed a multi-count complaint in district court
`against Charlene. It alleged violations of federal copyright
`law as well as state-law claims; Charlene both answered the
`complaint and counterclaimed. After extensive discovery,
`Pivot Point filed a comprehensive motion for summary
`judgment on its complaint and Charlene’s counterclaims.
`Charlene filed several cross-motions for summary judgment
`as well. The district court tentatively ruled on these motions
`in July 2001 and issued a final ruling in October 2001.
`
`1. Merits
`In its opinion, the district court stated that “[t]he principal
`dispute is whether a human mannequin head is copy-
`rightable subject matter. If it is, then there must be a trial on
`
`2 Mr. Yau was not unfamiliar with Pivot Point. Shortly before
`founding Charlene Products in 1985, Mr. Yau had worked for
`Pivot Point.
`3 Charlene eventually obtained a copyright registration for its
`Liza mannequin.
`
`

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`Nos. 01-3888 & 02-1152
`
`5
`
`the question whether Liza is a knock off of Mara.” R.401 at
`1. The district court explained that, although sculptural
`works are copyrightable under 17 U.S.C. § 102(a)(5), sculp-
`tures that may be copyrighted are limited by the language
`of 17 U.S.C. § 101, which provides in relevant part:
`Such works shall include works of artistic craftsmanship
`insofar as their form but not their mechanical or utilitar-
`ian 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.
`According to the district court, there was no question that
`Mara was a sculpture. However, in the district court’s view,
`the sculpture served utilitarian ends. “Students in beauty
`schools practice styling hair on Mara’s head and may
`practice other skills by applying makeup to Mara’s eyes,
`lips, and cheeks. The parties dispute which functions are
`primary.” R.401 at 2.
`The district court then explored whether the artistic and
`utilitarian aspects of Mara were “separable” for purposes of
`the piece’s copyrightability: “The statutory separability
`requirement confines copyright protection to those aspects
`of the design that exist apart from its utilitarian value, and
`that could be removed without reducing the usefulness of
`the item.” Id. at 3. The district court observed that drawing
`this line is particularly troublesome.
`The statute, continued the district court, is generally
`recognized to suggest two types of separability: physical
`separability and conceptual separability. The district court
`
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`6
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`Nos. 01-3888 & 02-1152
`
`explained that physical separability occurs when the orna-
`mental nature of the object can be physically removed from
`the object and that
`[c]onceptual separability differs from physical separa-
`bility by asking not whether the features to be copy-
`righted could be sliced off for separate display, but
`whether one can conceive of this process. Relying on
`a comment in the House Report on the 1976 amend-
`ments, the second circuit
`in Kieselstein-Cord [v.
`Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980),]
`purported to adopt conceptual separability as the ex-
`clusive test (632 F.2d at 992, contrasting that approach
`with Esquire [v. Ringer, 591 F.2d 796 (D.C. Cir. 1978)],
`which opted for physical separability, 591 F.2d at
`803-04). Why a court should repair to the legislative
`history is unclear; the second circuit did not identify
`any ambiguity in § 101 that needed to be resolved, and
`a statement in the House Report that what appears
`on the face of the statutory text to be two requirements
`(physical and conceptual separability) should be ad-
`ministered as just one is not a proposition that in to-
`day’s legal climate can be indulged. The Supreme Court
`does not permit the use of legislative history to alter, as
`opposed to elucidate, a statutory text.
`Id. at 4.
`Despite this lack of statutory moorings, the district court
`nevertheless reviewed the differing formulations for con-
`ceptual separability and determined that the definition
`proposed by Professor Paul Goldstein was the best one: “a
`pictorial, graphic or sculptural feature incorporated in the
`design of a useful article is conceptually separable if it can
`stand on its own as work of art traditionally conceived, and
`if the useful article in which it is embodied would be equal-
`ly useful without it.” R.401 at 5 (quoting 1 Paul Goldstein,
`
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`Nos. 01-3888 & 02-1152
`
`7
`
`Copyright: Principles, Law & Practice § 2.5.3, at 109 (1989)).
`The district court believed that the strength of this definition
`“comes from the fact that it differs little, if at all, from the
`test of physical separability embraced by the D.C. Circuit in
`Esquire and by the majority in Carol Barnhart [Inc., v. Econ-
`omy Cover Corp., 773 F.2d 411, 418 (2d Cir. 1985)].” Id.
`Applying this test led the district court to conclude that
`Mara cannot be copyrighted because, even though one
`can conceive of Mara as a sculpture displayed as art, it
`would not be equally useful if the features that Pivot
`Point want to copyright were removed. So long as a
`utilitarian function is makeup tutoring and practice and
`the fact that Pivot Points sells Mara without eye or lip
`coloring shows that this is a function even if not, in
`Pivot Point’s view, the “primary” one—the utilitarian
`value would be diminished by removing the aesthetic
`features that Pivot Point wants to protect by copyright.
`
`Id.
`As a final matter, the district court distinguished two
`cases, Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320
`(2d Cir. 1996), and Superior Form Builders, Inc. v. Dan Chase
`Taxidermy Supply Co., Inc., 74 F.3d 488 (4th Cir. 1996), which
`upheld the copyrightability of animal and fish mannequins.
`The district court found the Hart case unpersuasive, but
`concluded that “one cannot say of Mara what the fourth
`circuit said of animal mannequins: Mara is valued not for
`‘its own appearance’ but for what it enables students to do
`and learn. Mara is a ‘useful article’ as § 101 and Superior
`Form Builders deploy that term.” Id. at 6.
`
`2. Fee Petition
`Although fees are available under the 1976 Act, the
`district court’s order made no provision for fees. Charlene,
`
`

`
`8
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`Nos. 01-3888 & 02-1152
`
`therefore, sought an award of attorneys’ fees of approxi-
`mately $421,915 pursuant to 17 U.S.C. § 505. Charlene
`submitted its fees to Pivot Point and sought to confer and
`exchange information as required by Northern District of
`Illinois Local Rule 54.3(d). Pivot Point would not participate
`in this exercise on the basis that any fee request would be
`untimely because Charlene had missed the fourteen-day
`deadline for filing a fee motion set forth in Federal Rule of
`Civil Procedure 54(d)(2)(B).
`Charlene then moved for an instruction from the district
`court ordering Pivot Point to participate in the fee request
`process but the district court refused. It explained that its
`“opinion and declaratory judgment resolving this case on
`the merits did not make any provision for attorneys’ fees.”
`R.413 at 1. Because the judgment did not contain an order
`with respect to an attorneys’ fee petition, the district court
`did not believe Local Rule 54.3 was applicable. Instead, the
`parties were bound by the fourteen-day deadline set forth
`in Federal Rule 54 (d)(2)(B). Furthermore, the district court
`believed that its reading of Local Rule 54.3—as not extend-
`ing the time period allowed in Federal Rule 54—saved the
`local rule because otherwise it would be inconsistent with
`Federal Rule 54 and therefore invalid pursuant to Federal
`Rule 83.4
`
`4 Federal Rule of Civil Procedure 83 provides:
`(1) Each district court, acting by a majority of its district
`judges, may, after giving appropriate public notice and an
`opportunity for comment, make and amend rules governing
`its practice. A local rule shall be consistent with—but not
`duplicative of—Acts of Congress and rules adopted under 28
`U.S.C. §§ 2072 and 2075, and shall conform to any uniform
`numbering system prescribed by the Judicial Conference of
`(continued...)
`
`

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`Nos. 01-3888 & 02-1152
`
`9
`
`Finally, the district court acknowledged that it had the
`discretion to extend the time to file such a motion; however,
`it stated that it was “not even slightly disposed to grant any
`[extension], because the parties knew well before October 2
`what the judgment was likely to provide.” Id. at 1.
`Pivot Point now appeals from the district court’s sum-
`mary judgment in favor of Charlene; Charlene appeals from
`the district court’s judgment with respect to its attorneys’
`fee petition.
`
`II
`ANALYSIS
`A. Standard of Review
`This court reviews de novo a district court’s grant of
`summary judgment. See Silk v. City of Chicago, 194 F.3d 788,
`798 (7th Cir. 1999). In evaluating the judgment, we “con-
`strue all facts in the light most favorable to the non-moving
`party and draw all reasonable and justifiable inferences in
`favor of that party.” Bellaver v. Quanex Corp., 200 F.3d 485,
`491-92 (7th Cir. 2000). If the record shows “that there is no
`genuine issue as to any material fact and that the moving
`party is entitled to judgment as a matter of law,” summary
`
`4 (...continued)
`the United States. A local rule takes effect on the date
`specified by the district court and remains in effect unless
`amended by the court or abrogated by the judicial council of
`the circuit. Copies of rules and amendments shall, upon their
`promulgation, be furnished to the judicial council and the
`Administrative Office of the United States Courts and be
`made available to the public.
`Fed. R. Civ. P. 83(a)(1) (emphasis added).
`
`

`
`10
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`Nos. 01-3888 & 02-1152
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`judgment is appropriate. Fed. R. Civ. P. 56(c); see Celotex
`Corp. v. Catrett, 477 U.S. 317, 322 (1986).
`
`B. Copyrightability
`The central issue in this case is whether the Mara manne-
`quin is subject to copyright protection. This issue presents,
`at bottom, a question of statutory interpretation. We there-
`fore begin our analysis with the language of the statute.
`Two provisions contained in 17 U.S.C. § 101 are at the center
`of our inquiry. The first of these is the description of
`pictorial, graphic and sculptural works:
`“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 utilitar-
`ian 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.
`The definition section further provides that “[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. An article that is normally a part of
`a useful article is considered a ‘useful article.’ ” 17 U.S.C.
`§ 101. As is clear from the definition of pictorial, graphic
`and sculptural work, only “useful article[s],” as the term is
`further defined, are subject to the limitation contained in the
`
`

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`Nos. 01-3888 & 02-1152
`
`11
`
`emphasized language above. If an article is not “useful” as
`the term is defined in § 101, then it is a pictorial, graphic
`and sculptural work entitled to copyright protection
`(assuming the other requirements of the statute are met).
`
`1. Usefulness
`Pivot Point submits that the Mara mannequin is not a
`“useful article” for purposes of § 101 because its “inherent
`nature is to portray the appearance of runway models. Its
`value,” continues Pivot Point, “resides in how well it por-
`trays the appearance of runway models, just as the value of
`a bust—depicting Cleopatra, for example, . . .—would be in
`how well it approximates what one imagines the subject
`looked like.” Appellant’s Br. at 19. Pivot Point relies upon
`the decisions of the Fourth Circuit in Superior Form Builders
`and of the Second Circuit in Hart for the proposition that
`mannequins, albeit in those cases animal and fish manne-
`quins, are not useful articles. Specifically, the Fourth Circuit
`explained that
`[a] mannequin provides the creative form and expres-
`sion of the ultimate animal display. . . . Even though
`covered with a skin, the mannequin is not invisible but
`conspicuous in the final display. The angle of the ani-
`mal’s head, the juxtaposition of its body parts, and the
`shape of the body parts in the final display is little more
`than the portrayal of the underlying mannequin.
`Indeed, the mannequin can even portray the intensity of
`flexed body parts, or it can reveal the grace of relaxed
`ones. None of these expressive aspects of a mannequin
`is lost by covering the mannequin with a skin. Thus, any
`utilitarian aspect of the mannequin exists “merely to
`portray the appearance” of the animal.
`Superior Form Builders, 74 F.3d at 494; see also Hart, 86 F.3d at
`323 (“The function of the fish form is to portray its own
`
`

`
`12
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`Nos. 01-3888 & 02-1152
`
`appearance, and that fact is enough to bring it within the
`scope of the Copyright Act.”). Consequently, in Pivot
`Point’s view, because the Mara mannequin performs func-
`tions similar to those of animal and fish mannequins, it is
`not a useful article and is therefore entitled to full copyright
`protection.
`Charlene presents us with a different view. It suggests
`that, unlike the animal mannequins at issue in Superior Form
`Builders and in Hart, the Mara mannequin does have a
`useful function other than portraying an image of a high-
`fashion runway model. According to Charlene, Mara also is
`marketed and used for practicing the art of makeup ap-
`plication. Charlene points to various places in the record
`that establish that Mara is used for this purpose and is,
`therefore, a useful article subject to the limiting language of
`§ 101.
`Pivot Point strongly disputes that the record establishes
`such a use and argues that the district court’s reliance on
`Charlene’s alleged proof improperly resolves an issue of fact
`against the non-moving party in contravention of Federal
`Rule of Civil Procedure 56.5 Indeed, our own review of the
`
`5 The district court relied heavily on this fact in concluding that
`Mara is a useful object:
`Mara is a work of “applied art” and displays “artistic
`craftsmanship”—Pivot Point commissioned a sculptor to
`design a mannequin head that emulates features of runway
`models—but serves utilitarian ends: Students in beauty
`schools practice styling hair on Mara’s head and may
`practice other skills by applying makeup to Mara’s eyes, lips,
`and cheeks. The parties dispute which functions are primary.
`Charlene Products says that Mara is used primarily for
`practicing makeup; Pivot Point insists that its primary use is
`(continued...)
`
`

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`Nos. 01-3888 & 02-1152
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`13
`
`record leads us to believe that many of the documents cited
`by Charlene are susceptible to more than one interpretation.
`Nevertheless, we shall assume that the district court
`correctly ruled that Mara is a useful article and proceed to
`examine whether, despite that usefulness, it is amenable to
`copyright protection.
`
`2. Separability
`We return to the statutory language. A useful article falls
`within the definition of pictorial, graphic or sculptural
`works “only if, and only to the extent that, such design incorpo-
`rates pictorial, graphic, or sculptural features that can be identi-
`fied separately from, and are capable of existing independently of,
`
`5 (...continued)
`hair styling. This factual dispute might have legal signifi-
`cance if Pivot Point were contending that Mara’s sole use is
`hair styling; then it is (barely) possible to imagine a suitable
`mannequin head devoid of human features. (The legal
`significance of this possibility is explicated below.) But Pivot
`Point contends only that Mara’s “primary” use is hair
`styling; it does not deny that a use (if only, in its view, a
`secondary one) is the application of makeup and other
`beauty-school arts, and the evidence would not permit a
`reasonable jury to conclude that Mara has no utilitarian
`value for makeup practice. (Pivot Point says that it “gener-
`ally” sells Mara with painted-on makeup, which reveals by
`negative implication that it also sells Mara without eye or
`cheek coloring, so that beauty-school students can add their
`own.)
`R.401 at 2.
`
`

`
`14
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`Nos. 01-3888 & 02-1152
`
`the utilitarian aspects of the article.” 17 U.S.C. § 101.6 It is
`common ground between the parties and, indeed, among
`the courts that have examined the issue, that this language,
`added by the 1976 Act, was intended to distinguish creative
`works that enjoy protection from elements of industrial
`design that do not. See H.R. Rep. No. 94-1476, at 55 (1976),
`
`6 Prior to the addition of this language in the 1976 Act, Congress
`had not explicitly authorized the Copyright Office to register
`“useful articles.” Indeed, when Congress first extended copyright
`protection to three-dimensional works of art in 1870, copyright
`protection was limited to objects of fine art; objects of applied art
`still were not protected. See Paul Goldstein, 1 Copyright § 2.5.3 at
`2:58 (2d ed. 2004). This changed with the adoption of the Copy-
`right Act of 1909 (“1909 Act”); Professor Goldstein explains:
`The 1909 Act, which continued protection for three-dimen-
`sional works of art, dropped the requirement that they
`constitute fine art and thus opened the door to protection of
`useful works of art. In 1948, the Copyright Office broadened
`the scope of protection for three-dimensional works of art to
`cover “works of artistic craftsmanship insofar as their form
`but not their utilitarian aspects are concerned.” The United
`States Supreme Court upheld this interpretation in Mazer v.
`Stein, [347 U.S. 201, 213 (1954),] holding that the fact that
`statuettes in issue were intended for use in articles of
`manufacture—electric lamp bases—did not bar them from
`copyright. Five years later, in 1959, the Copyright Office
`promulgated a rule that if “the sole intrinsic function of an
`article is its utility, the fact that the work is unique and
`attractively shaped will not qualify it as a work of art.” The
`regulation did, however, permit registration of features of a
`utilitarian article that “can be identified separately and are
`capable of existing independently as a work of art.”
`Id. (quoting 37 C.F.R. § 207.8(a) (1949) and 37 C.F.R. § 202.10(c)
`(1959); footnotes omitted).
`
`

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`Nos. 01-3888 & 02-1152
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`15
`
`reprinted in 1976 U.S.C.C.A.N. 5659, 5668 (stating that the
`purpose behind this language was “to draw as clear a line
`as possible between copyrightable works of applied art and
`uncopyrighted works of industrial design”). Although the
`Congressional goal was evident, application of this lan-
`guage has presented the courts with significant difficulty.
`Indeed, one scholar has noted: “Of the many fine lines that
`run through the Copyright Act, none is more troublesome
`than the line between protectible pictorial, graphic and
`sculptural works and unprotectible utilitarian elements of
`industrial design.” Paul Goldstein, 1 Copyright § 2.5.3, at
`2:56 (2d ed. 2004).
`The difficulty in the application of this language would
`not have come, in all likelihood, as a surprise to the Con-
`gressional drafters. The language employed by Congress is
`not the language of a bright-line rule of universal applica-
`tion. Indeed, the circuits that have addressed the interpreta-
`tive problem now before us uniformly have recognized that
`the wording of the statute does not supply categorical
`direction, but rather requires the Copyright Office and the
`courts “to continue their efforts to distinguish applied art
`and industrial design.” Robert C. Denicola, Applied Art &
`Industrial Design: A Suggested Approach to Copyright in Useful
`Articles, 67 Minn. L. Rev. 707, 730 (1983). In short, no doubt
`well-aware of the myriad of factual scenarios to which its
`policy guidance would have to be applied, Congress wisely
`chose to provide only general policy guidance to be imple-
`mented on a case-by-case basis through the Copyright
`Office and the courts.
`Even though the words of the statute do not yield a
`definitive answer, we believe that the statutory language
`nevertheless provides significant guidance in our task. We
`therefore shall examine in more detail what that language
`has to tell us, and we return to the necessary starting point
`of our task, § 101.
`
`

`
`16
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`Nos. 01-3888 & 02-1152
`
`The statutory language provides that “the design of a
`useful article . . . 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.” Al-
`though the
`italicized clause contains two operative
`phrases—“can be identified separately from” and “are capable of
`existing independently of”—we believe, as have the other
`courts that have grappled with this issue,7 that Congress, in
`amending the statute, intended these two phrases to state a
`single, integrated standard to determine when there is
`sufficient separateness between the utilitarian and artistic
`aspects of a work to justify copyright protection.
`Certainly, one approach to determine whether material
`can be “identified separately,” and the most obvious, is to
`rely on the capacity of the artistic material to be severed
`physically from the industrial design. See Mazer v. Stein, 347
`U.S. 201 (1954) (holding that a statuette incorporated into
`the base of a lamp is copyrightable). When a three-dimen-
`sional article is the focus of the inquiry, reliance on physical
`separability can no doubt be a helpful tool in ascertaining
`whether the artistic material in question can be separated
`from the industrial design. As Professor Denicola points
`out, however, such an approach really is not of much use
`when the item in question is two-dimensional. See Denicola,
`supra, at 744. Indeed, because this provision, by its very
`words, was intended to apply to two-dimensional material,
`it is clear that a physical separability test cannot be the
`exclusive test for determining copyrightability.
`
`7
`
` See infra note 8.
`
`

`
`Nos. 01-3888 & 02-1152
`
`17
`
`It seems to be common ground between the parties and,
`indeed, among the courts and commentators, that the pro-
`tection of the copyright statute also can be secured when a
`conceptual separability exists between the material sought
`to be copyrighted and the utilitarian design in which that
`material is incorporated.8 The difficulty lies not in the
`
`8
`
` Although the district court was skeptical that the statutory
`language encompassed both physical and conceptual separabil-
`ity, circuits have been almost unanimous in interpreting the
`language of § 101 to include both types of separability. See
`Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., Inc.,
`74 F.3d 488, 494 (4th Cir. 1996) (asking whether functional aspects
`of animal mannequins are “conceptually separable from the
`works’ sculptural features”); Brandir Int’l, Inc. v. Cascade Pac.
`Lumber Co., 834 F.2d 1142, 1144 (2d Cir. 1987) (stating that
`“ ‘[c]onceptual separability’ is alive and well”); Carol Barnhart Inc.
`v. Econ. Cover Corp., 773 F.2d 411, 418 (2d Cir. 1985) (judging
`copyrightability of mannequin torsos based on whether “forms
`possess aesthetic or artistic features that are physically or
`conceptually separable from the forms’ use as utilitarian objects
`to display clothes”); Norris Indus., Inc. v. Int’l Tel. & Tel. Corp., 696
`F.2d 918, 923 (11th Cir. 1983) (“Both case law and legislative
`history indicate that separability encompasses works of art that
`are either physically severable from the utilitarian article or
`conceptually severable.”); Kieselstein-Cord v. Accessories by Pearl,
`Inc., 632 F.2d 989, 993 (2d Cir. 1980) (applying test of conceptual
`separability).
`Only one appellate court has rejected the idea of conceptual
`separability. See Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C. Cir.
`1978). In that case, arising under the 1909 Act, the Copyright
`Office had refused to register a design for outdoor lighting
`fixtures. The district court, however, believed the fixtures were
`copyrightable and issued a writ of mandamus that the copyright
`issue. However, the D.C. Circuit reversed. The precise question
`(continued...)
`
`

`
`18
`
`Nos. 01-3888 & 02-1152
`
`8 (...continued)
`before the court was whether the regulation implementing the
`1909 Act mandated that the Copyright Office register a copyright
`for the lighting fixtures. The regulation at issue provided:
`“(c) 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 utilitar-
`ian 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.”
`Id. at 800 (quoting 37 C.F.R. § 202.10(b) (1976)). The Copyright
`Office took the position that the regulation barred “copyright
`registration for the overall shape or configuration of a utilitarian
`article, no matter how aesthetically pleasing that shape or
`configuration may be.” Id. In determining whether to accept or
`reject the proffered
`interpretation, the court noted that
`“[c]onsiderable weight is to be given to an agency’s interpretation
`of its regulations,” especially when “an administrative interpreta-
`tion relates to a matter within the field of administrative exper-
`tise.” Id. at 801. The court concluded that the Copyright Office
`had adopted a “reasonable and well-supported interpretation of
`§ 202.10(c).” Id. at 800. In the court’s view, the interpretation was
`grounded in “the principle that industrial designs are not eligible
`for copyright.” Id. The court also believed that the interpretation
`found support in the legislative history of the newly enacted 1976
`Act. The court acknowledged, however, that the legislative
`history was not “free from ambiguity”; it explained:
`Esquire could arguably draw some support from the state-
`ment that a protectable element of a utilitarian article must
`be separable “physically or conceptually” from the utilitarian
`aspects of the design. But any possible ambiguity raised by
`this isolated reference disappears when the excerpt is
`considered in its entirety. The underscored passages indicate
`(continued...)
`
`

`
`Nos. 01-3888 & 02-1152
`
`19
`
`acceptance of that proposition, which the statutory language
`clearly contemplates, but in its application. As noted by
`Pivot Point, the following tests have been suggested for
`determining when the artistic and utilitarian aspects of
`useful articles are conceptually separable: 1) the artistic
`features are “primary” and the utilitarian features “subsid-
`iary,” Kieselstein-Cord, 632 F.2d at 993; 2) the useful article
`“would still be marketable to some significant segment of
`the community simply because of its aesthetic qualities,”
`Melville B. Nimmer & David Nimmer, 1 Nimmer on
`Copyright § 2.08 [B][3], at 2-101 (2004); 3) the article
`“stimulate[s] in the mind of the beholder a concept that is
`separate from the concept evoked by its utilitarian func-
`tion,” Carol Barnhart, 773 F.2d at 422 (Newman, J., dissent-
`ing); 4) the artistic design was not significantly influenced
`by functional considerations, see Brandir Int’l, 834 F.2d at
`
`8 (...continued)
`unequivocally that the overall design or configuration of a
`utilitarian object, even if it is determined by aesthetic as well
`as funct