                                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.
                                                                   1
         No. 90 C 6933—Frank H. Easterbrook, Circuit Judge.
                             ____________
          ARGUED JUNE 6, 2003—DECIDED JUNE 25, 2004
                             ____________



    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.”
Nos. 01-3888 & 02-1152                                       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.”
4                                      Nos. 01-3888 & 02-1152

  At a trade show in 1989, Charlene, a wholesaler of beauty
                                 2
products founded by Mr. Yau, 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
             3
this action.


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.
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
6                                    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,
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                                        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
         4
Rule 83.


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...)
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                                       Nos. 01-3888 & 02-1152

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
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                                      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
                           5
Rule of Civil Procedure 56. 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...)
Nos. 01-3888 & 02-1152                                              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                                       Nos. 01-3888 & 02-1152
                                                              6
the utilitarian aspects of the article.” 17 U.S.C. § 101. 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).
Nos. 01-3888 & 02-1152                                     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                                     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
                                             7
courts that have grappled with this issue, 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
                           8
material is incorporated. 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 functional considerations, is not eligible for copyright.
       Thus the legislative history, taken as congressional under-
       standing of existing law, reinforces the Register’s position.
Id. at 803-04.
  As is evident from the passages set forth above, the issue
addressed by the D.C. Circuit in Esquire arose in a much different
procedural and legal environment than the issue in the present
case. The court’s focus in Esquire was a regulation adopted
pursuant to the former law and its obligation to defer to the
agency’s interpretation of the law embodied in that regulation.
Furthermore, the court acknowledged that the 1976 Act was “not
applicable to the case before” it. Id. at 803. Given these differ-
ences, we do not believe that the D.C. Circuit would conclude
that its decision in Esquire disposed of the issue of conceptual
separability presently before this court.
20                                    Nos. 01-3888 & 02-1152

1145 (adopting the test forwarded in Denicola, supra, at 741);
5) the artistic features “can stand alone as a work of art
traditionally conceived, and . . . the useful article in which
it is embodied would be equally useful without it,”
Goldstein, 1 Copyright § 2.5.3, at 2:67; and 6) the artistic
features are not utilitarian, see William F. Patry, 1 Copyright
Law & Practice 285 (1994).
  Pivot Point submits that “the test for conceptual separabil-
ity should reflect the focus of copyright law—the artistic,
not the marketability, design process, or usefulness.”
Appellant’s Br. at 26. According to Pivot Point, the central
inquiry is whether the article is a “ ‘work of art.’ ” Id. Pivot
Point further explains:
     Conceptual separability would inhere in a “work of art”
     integrated into a useful article, or a “work of art” put to
     unexpected use, since the independent concepts of art
     and utility coexist. Conceptual separability would not
     exist in a useful article rendered simply aesthetically
     pleasing, since the independent concept of art does not
     exist, only the “artistic” embellishment to its utility, so
     that such “artistic” features are actually utilitarian.
     Should the “artistic” embellishment of utility reach the
     level of a “work of art,” however, conceptual separabil-
     ity may exist.
Id. at 26-27. This test, Pivot Point suggests, has the addi-
tional benefit of “satisf[ying] most, if not all, of the current
definitions of conceptual separability.” Id. at 27.
  Charlene, by contrast, lauds the district court’s adoption
of Professor Goldstein’s test. “Under Goldstein’s test,”
Charlene asserts, “ ‘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 a work of art tradi-
tionally conceived, and if the useful article in which it is
Nos. 01-3888 & 02-1152                                        21

embodied would be equally useful without it.’ ” Appellees’
Br. at 26 (quoting R.401 at 5; emphasis added). Charlene
contends that this approach mirrors that adopted by the
majority in Carol Barnhart Inc. v. Economy Cover Corp., 773
F.2d 411 (2d Cir. 1985), “the most closely related precedent
to the case at bar.” Appellees’ Br. at 26.
   Although both sides present thoughtful explanations for
their proposed tests, we perceive shortcomings in the par-
ties’ choices. With respect to Pivot Point’s focus on the arti-
cle as a “work of art,” it is certainly correct that Congress, in
enacting § 101, attempted to separate the artistic from the
utilitarian. However, this approach necessarily involves
judges in a qualitative evaluation of artistic endeavors—a
function for which judicial office is hardly a qualifier. With
respect to the Charlene’s approach, we believe that the test,
at least when applied alone, is tied too closely to physical
separability and, consequently, does not give a sufficiently
wide berth to Congress’ determination that artistic material
conceptually separate from the utilitarian design can satisfy
the statutory mandate.
  In articulating a meaningful approach to conceptual se-
parability, we note that we are not the first court of appeals
to deal with this problem. The work of our colleagues in the
other circuits provides significant insights into our under-
standing of Congressional intent. Indeed, even when those
judges have disagreed on the appropriate application of the
Congressional mandate to the case before them, their insight
yield a bountiful harvest for those of us who now walk the
same interpretative path.
  Among the circuits, the Court of Appeals for the Second
Circuit has had occasion to wrestle most comprehensively
with the notion of “conceptual separability.” Its case law
represents, we believe, an intellectual journey that has ex-
22                                   Nos. 01-3888 & 02-1152

plored the key aspects of the problem. We therefore turn to
a study of the key stages of doctrinal development in its
case law.


                              a.
  The Second Circuit first grappled with the issue of
conceptual separability in Kieselstein-Cord v. Accessories by
Pearl, Inc., 632 F.2d 989 (2d Cir. 1980). In that case,
Kieselstein-Cord, a jewelry designer, had created a line of
decorative and jeweled belt buckles inspired by works of
art; he obtained copyright registrations for his designs.
When the line was successful, Accessories by Pearl, Inc.,
(“Pearl”) copied the designs and marketed its own, less-
expensive versions of the belt buckles. Kieselstein-Cord then
sued Pearl for copyright infringement; however,
Pearl claimed that the belt buckles were not copyrightable
because they were “ ‘useful articles’ with no ‘pictorial,
graphic, or sculptural features that can be identified sepa-
rately from, and are capable of existing independently of,
the utilitarian aspects’ of the buckles.” Id. at 991-92. The
Second Circuit disagreed. Although it did not articulate a
specific test for evaluating conceptual separability, it fo-
cused on the “primary” and “subsidiary” elements of the
article and concluded:
     We see in appellant’s belt buckles conceptually separa-
     ble 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 ornamen-
     tal 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 indus-
Nos. 01-3888 & 02-1152                                      23

     trial design. Pieces of applied art, these buckles may be
     considered jewelry, the form of which is subject to
     copyright protection.
                                       9
Id. at 993 (internal citations omitted).


                              b.
  The Second Circuit revisited the issue of conceptual
separability in Carol Barnhart Inc. v. Economy Cover Corp., 773
F.2d 411 (2d Cir. 1985). In that case, Carol Barnhart, a
provider of retail display items, developed four mannequins
consisting of human torsos for the display of shirts and
jackets. It obtained copyright registrations for each of the
       10
forms. When a competitor, Economy Cover, copied the
designs, Carol Barnhart claimed infringement of that
copyright. The Second Circuit held that the designs were not
copyrightable. It explained:
     [W]hile copyright protection has increasingly been ex-
     tended to cover articles having a utilitarian dimension,
     Congress has explicitly refused copyright protection for
     works of applied art or industrial design which have
     aesthetic or artistic features that cannot be identified
     separately from the useful article. Such works are not
     copyrightable regardless of the fact that they may be
     “aesthetically satisfying and valuable.”



9
    Judge Weinstein (sitting by designation) dissented. See
Kieselstein-Cord, 632 F.2d at 993.
10
  There were a total of four mannequins at issue, two male and
two female. Of those four, two of the mannequin forms were
unclothed, and two were formed with one layer of clothing and
were meant specifically for the display of outerwear.
24                                    Nos. 01-3888 & 02-1152

        Applying these principles, we are persuaded that
     since the aesthetic and artistic features of the Barnhart
     forms are inseparable from the forms’ use as utilitarian
     articles the forms are not copyrightable. . . . [Barnhart]
     stresses that the forms have been responded to as
     sculptural forms, and have been used for purposes
     other than modeling clothes, e.g., as decorating props
     and signs without any clothing or accessories. While
     this may indicate that the forms are “aesthetically sa-
     tisfying and valuable,” it is insufficient to show that the
     forms possess aesthetic or artistic features that are
     physically or conceptually separable from the forms’
     use as utilitarian objects to display clothes. On the
     contrary, to the extent the forms possess aesthetically
     pleasing features, even when these features are consid-
     ered in the aggregate, they cannot be conceptualized as
     existing independently of their utilitarian function.
Id. at 418 (internal citations omitted). The court also rejected
the argument that Kieselstein-Cord was controlling. The
majority explained that what distinguished the Kieselstein-
Cord buckles from the Barnhart forms was “that the orna-
mented surfaces of the buckles were not in any respect
required by their functions; the artistic and aesthetic
features would thus be conceived as having been added to,
or superimposed upon, an otherwise utilitarian article.” Id.
at 419.
  Perhaps the most theoretical and comprehensive discus-
sion of “conceptual separability,” as opposed to physical
separability, can be found in the dissenting opinion of Judge
Newman in Carol Barnhart, 773 F.2d at 419. After reviewing
the possible ways to determine conceptual separability,
Judge Newman set forth his choice and rationale:
Nos. 01-3888 & 02-1152                                     25

   How, then, is “conceptual separateness” to be deter-
   mined? In my view, the answer derives from the word
   “conceptual.” For the design features to be “concep-
   tually separate” from the utilitarian aspects of the useful
   article that embodies the design, the article must stimu-
   late in the mind of the beholder a concept that is sepa-
   rate from the concept evoked by its utilitarian function.
   The test turns on what may reasonably be understood
   to be occurring in the mind of the beholder or, as some
   might say, in the “mind’s eye” of the beholder. . . .
     ...
      The “separateness” of the utilitarian and non-utilitar-
   ian concepts engendered by an article’s design is itself
   a perplexing concept. I think the requisite “separate-
   ness” exists whenever the design creates in the mind of
   the ordinary observer two different concepts that are
   not inevitably entertained simultaneously. Again, the
   example of the artistically designed chair displayed in
   a museum may be helpful. The ordinary observer can be
   expected to apprehend the design of a chair whenever
   the object is viewed. He may, in addition, entertain the
   concept of a work of art, but, if this second concept is
   engendered in the observer’s mind simultaneously with
   the concept of the article’s utilitarian function, the
   requisite “separateness” does not exist. The test is not
   whether the observer fails to recognize the object as a
   chair but only whether the concept of the utilitarian
   function can be displaced in the mind by some other
   concept. That does not occur, at least for the ordinary
   observer, when viewing even the most artistically
   designed chair. It may occur, however, when viewing
   some other object if the utilitarian function of the object
   is not perceived at all; it may also occur, even when the
   utilitarian function is perceived by observation, perhaps
26                                    Nos. 01-3888 & 02-1152

     aided by explanation, if the concept of the utilitarian
     function can be displaced in the observer’s mind while
     he entertains the separate concept of some non-utilitar-
     ian function. The separate concept will normally be that
     of a work of art.
Id. at 422-23.


                              c.
  The Second Circuit soon addressed conceptual separ-
ability again in Brandir International, Inc. v. Cascade Pacific
Lumber Co., 834 F.2d 1142 (2d Cir. 1987). That case involved
the work of an artist, David Levine; specifically, Levine had
created a sculpture of thick, interwoven wire. A cyclist
friend of Levine’s realized that the sculpture could, with
modification, function as a bicycle rack and thereafter put
Levine in touch with Brandir International, Inc. (“Brandir”).
The artist and the Brandir engineers then worked to modify
the sculpture to produce a workable and marketable bicycle
rack. Their work culminated in the “Ribbon Rack,” which
Brandir began marketing in 1979. Shortly thereafter, Cas-
cade Pacific Lumber Co. (“Cascade”) began selling a similar
product, and, in response, Brandir applied for copyright
protection and began placing copyright notices on its racks.
The Copyright Office, however, rejected the registration on
the ground that the rack did not contain any element that
was “capable of independent existence as a copyrightable
pictorial, graphic or sculptural work apart from the shape of
the useful article.” Id. at 1146.
  The court first considered the possible tests for conceptual
separability in light of its past decisions and, notably,
attempted to reconcile its earlier attempts:
Nos. 01-3888 & 02-1152                                       27

     Perhaps the differences between the majority and the
   dissent in Carol Barnhart might have been resolved had
   they had before them the Denicola article on Applied Art
   and Industrial Design: A Suggested Approach to Copyright
   in Useful Articles, [67 Minn. L. Rev. 707 (1983)]. . . .
   Denicola argues that “the statutory directive requires a
   distinction between works of industrial design and
   works whose origins lie outside the design process,
   despite the utilitarian environment in which they
   appear.” He views the statutory limitation of
   copyrightability as “an attempt to identify elements
   whose form and appearance reflect the unconstrained
   perspective of the artist,” such features not being the
   product of industrial design. Id. at 742. “Copyright-
   ability, therefore, should turn on the relationship be-
   tween the proffered work and the process of industrial
   design.” Id. at 741. He suggests that “the dominant
   characteristic of industrial design is the influence of
   nonaesthetic, utilitarian concerns” and hence concludes
   that copyrightability “ultimately should depend on the
   extent to which the work reflects artistic expression
   uninhibited by functional considerations.” Id. To state
   the Denicola test in the language of conceptual separa-
   bility, 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 elements. Conversely, where design ele-
   ments can be identified as reflecting the designer’s
   artistic judgment exercised independently of functional
   influences, conceptual separability exists.
     We believe that Professor Denicola’s approach pro-
   vides the best test for conceptual separability and,
   accordingly, adopt it here for several reasons. First, the
   approach is consistent with the holdings of our previous
   cases. In Kieselstein-Cord, for example, the artistic aspects
28                                     Nos. 01-3888 & 02-1152

     of the belt buckles reflected purely aesthetic choices,
     independent of the buckles’ function, while in Carol
     Barnhart the distinctive features of the torsos—the
     accurate anatomical design and the sculpted shirts and
     collars—showed clearly the influence of functional con-
     cerns. . . . Second, the test’s emphasis on the influence of
     utilitarian concerns in the design process may help . . .
     “alleviate the de facto discrimination against
     nonrepresentational art that has regrettably accompa-
     nied much of the current analysis.” Id. at 745.
Id. at 1145 (footnotes omitted).
  Applying Professor Denicola’s test to the Ribbon Rack, the
court found that the rack was not copyrightable. The court
stated that, “[h]ad Brandir merely adopted one of the
existing sculptures as a bicycle rack, neither the application
to a utilitarian end nor commercialization of that use would
have caused the object to forfeit its copyrighted status.” Id.
at 1147. However, when the Ribbon Rack was compared to
earlier sculptures, continued the court, it was “in its final
form essentially a product of industrial design.” Id.
     In creating the RIBBON Rack, the designer . . . clearly
     adapted the original aesthetic elements to accommodate
     and further a utilitarian purpose. These altered design
     features of the RIBBON Rack, including the
     spacesaving, open design achieved by widening the
     upper loops . . ., the straightened vertical elements that
     allow in- and above-ground installation of the rack, the
     ability to fit all types of bicycles and mopeds, and the
     heavy-gauged tubular construction of rustproof gal-
     vanized steel, are all features that combine to make for
     a safe, secure, and maintenance-free system of parking
     bicycles and mopeds.
     ...
Nos. 01-3888 & 02-1152                                     29

      . . . While the RIBBON Rack may be worthy of admi-
    ration for its aesthetic qualities alone, it remains none-
    theless the product of industrial design. Form and
    function are inextricably intertwined in the rack, its
    ultimate design being as much the result of utilitarian
    pressures as aesthetic choices . . . . Thus there remains
    no artistic element of the RIBBON Rack that can be
    identified as separate and “capable of existing inde-
    pendently, of, the utilitarian aspects of the article.”
Id. at 1146-47.


                             d.
  We believe that the experience of the Second Circuit is
also reflected in the more recent encounter of the Fourth
Circuit with the same problem. In Superior Form Builders,
Inc. v. Dan Chase Taxidermy Supply Co., Inc., 74 F.3d 488 (4th
Cir. 1996), the court considered whether animal mannequins
qualified for copyright protection. The Fourth Circuit first
considered whether the mannequins were useful articles as
defined by § 101 and concluded that they were not:
      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
    animal’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 manne-
    quin. . . . None of these expressive aspects of a manne-
    quin 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. See 17
    U.S.C. § 101.
30                                     Nos. 01-3888 & 02-1152

       . . . It is the portrayal of the animal’s body expression
     given by the mannequin that is thus protectable under
     the Copyright Act. We therefore agree with the district
     court in this case because “the usefulness of the forms is
     their portrayal of the appearance of animals.” The
     mannequin forms “by definition are not useful articles.”
Id. at 494 (quoting Superior Form Builders v. Dan Chase
Taxidermy Supply Co., Inc., 851 F.Supp. 222, 223 (E.D. Va.
1994)).
  The court, however, also considered whether, if useful, the
utilitarian and aesthetic aspects of the mannequin were
separable:
        To the extent that an argument can be made that the
     mannequins in this case perform a utilitarian func-
     tion—other than portraying themselves—by supporting
     the mounted skins, we believe the function to be con-
     ceptually separable from the works’ sculptural features.
     See Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d
     1142, 1145 (2d Cir. 1987) (“Where design elements can
     be identified as reflecting the designer’s artistic judg-
     ment exercised independently of functional influences,
     conceptual separability exists.”); Kieselstein-Cord v.
     Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980)
     (finding sculptural element of belt buckle conceptually
     separable from utilitarian function).
Id. Thus, without specifically adopting one of the tests of
conceptual separability, the Fourth Circuit determined that
artistic work put into the design of the animal frame was
copyrightable; the fact that a skin was placed on the model
Nos. 01-3888 & 02-1152                                            31

and that the model, therefore, was useful in the display of
                                                             11
the skin did not negate the artistic elements of the design.


11
   Notably, in Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320
(2d Cir. 1996), the Second Circuit shortly thereafter addressed the
question whether a fish mannequin was copyrightable. Although
the court did not address specifically the issue before us today, its
analysis is nevertheless helpful. Referring to its decision in Carol
Barnhart, the Second Circuit posed the question rather simplisti-
cally: “Is taxidermy different [for purposes of copyright protec-
tion]?” Id. at 321. The Second Circuit resolved that it is:
       We do not agree that Barnhart mandates a finding that fish
     mannequins are “useful articles” undeserving of copyright
     protection. . . . [W]e do not believe that the Barnhart torsos
     can be analogized to the fish in this case. In Barnhart, the
     headless, armless, backless styrene torsos were little more
     than glorified coat-racks used to display clothing in stores.
     The torsos were designed to present the clothing, not their
     own forms. In taxidermy, by contrast, people look for more
     than a fish skin; they wish to see a complete “fish.” The
     superficial characteristics of the fish, such as its color and
     texture, are admittedly conveyed by the skin, but the shape,
     volume, and movement of the animal are depicted by the
     underlying mannequin. Whether the fish is shown as resting,
     jumping, wiggling its tail, or preparing to munch on some
     plankton, is dictated by the mannequin and by its particular
     form, not by the skin.
        In short, the fish mannequin is designed to be looked at.
     That the fish mannequin is meant to be viewed clothed by a
     fish skin, rather than naked and on its own, makes no
     difference. The function of the fish form is to portray its own
     appearance, and that fact is enough to bring it within the
     scope of the Copyright Act. 17 U.S.C. § 101; accord Superior
     Form Builders v. Dan Chase Taxidermy Supply Co., 74 F.3d 488
     (4th Cir. 1996) (distinguishing Barnhart and holding that
                                                      (continued...)
32                                          Nos. 01-3888 & 02-1152

                                   e.
    There is one final Second Circuit case that bears comment.
In Mattel, Inc. v. Goldberger Doll Manufacturing Co., 365 F.3d
133 (2d Cir. 2004), the Second Circuit rejected the idea that
a particular expression of features on a doll’s face was not
subject to copyright protection. The case arose out of the
alleged copying of the facial features of Mattel’s Barbie dolls
by Goldberger Doll Manufacturing when creating its
“Rockettes 2000” doll. On Goldberger’s motion for sum-
mary judgment, the district court held that “copyright
protection did not extend to Barbie’s eyes, nose, and mouth .
. . .” Id. at 134. The Second Circuit reversed. Although it did
not speak specifically in terms of conceptual separability,
the court’s reasoning is nevertheless instructive; it stated:
       The proposition that standard or common features are
       not protected is inconsistent with copyright law. To
       merit protection from copying, a work need not be
       particularly novel or unusual. It need only have been
       “independently created” by the author and possess
       “some minimal degree of creativity.” Feist Publ’ns, Inc.


11
     (...continued)
        mammal taxidermy mannequins are “sculptural works”
        rather than “useful articles” because their utilitarian aspects
        serve “merely to portray the appearance” of the animal). . . .
         We conclude that fish mannequins even if considered
       “useful articles,” are useful insofar as they “portray the[ir]
       appearance.” 17 U.S.C. § 101. That makes them
       copyrightable.
Id. at 323 (internal citation omitted). Thus, the Second Circuit
distinguished fish mannequins from human mannequins;
however, it did so on the basis that the fish mannequins were not
“useful articles” as that term is defined in § 101, not on the basis
that, although useful, the artistic aspects were physically or
conceptually separable from the useful aspects of the article.
Nos. 01-3888 & 02-1152                                         33

    v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). . . . There
    are innumerable ways of making upturned noses, bow
    lips, and widely spaced eyes. Even if the record had
    shown that many dolls possess upturned noses, bow
    lips, and wide-spread eyes, it would not follow that
    each such doll—assuming it was independently created
    and not copied from others—would not enjoy pro-
    tection from copying.
Id. at 135 (footnotes and parallel citations omitted). Addi-
tionally, the court noted the scope of the copyright protec-
tion that the Barbie dolls enjoyed:
    The copyright does not protect ideas; it protects only the
    author’s particularized expression of the idea. Thus,
    Mattel’s copyright in a doll visage with an upturned
    nose, bow lips, and widely spaced eyes will not prevent
    a competitor from making dolls with upturned noses,
    bow lips, and widely spaced eyes, even if the competi-
    tor has taken the idea from Mattel’s example, so long as
    the competitor has not copied Mattel’s particularized
    expression. An upturned nose, bow lips, and wide eyes
    are the “idea” of a certain type of doll face. That idea
    belongs not to Mattel but to the public domain. But
    Mattel’s copyright will protect its own particularized
    expression of that idea and bar a competitor from
    copying Mattel’s realization of the Barbie features.
Id. at 136 (citations omitted).


C. Application
 Each of these cases differs in the object at issue and the
method by which the court evaluated whether the object
was entitled to copyright protection. Yet, each court at-
34                                    Nos. 01-3888 & 02-1152

tempted to give effect to “the expressed congressional intent
to distinguish copyrightable applied art and uncopy-
rightable industrial design.” Kieselstein-Cord, 632 F.2d at 993;
see also Carol Barnhart, 773 F.2d at 417-18 (reviewing legisla-
tive history in detail and concluding that, although “copy-
right protection has increasingly been extended to cover
articles having a utilitarian dimension,” Congress did not
intend all useful articles that are “aesthetically satisfying or
valuable” to be copyrightable); Brandir Int’l, 834 F.2d at 1145
(adopting Professor Denicola’s test that makes
copyrightability dependent upon “the extent to which the
work reflects artistic expression uninhibited by functional
considerations” (internal quotation marks and citations
omitted)); Superior Form Builders, 74 F.3d at 494 (distinguish-
ing the animal mannequins at issue from “aesthetically
pleasing articles of industrial design”).
  The Second Circuit cases exhibit a progressive attempt to
forge a workable judicial approach capable of giving mean-
ing to the basic Congressional policy decision to distinguish
applied art from uncopyrightable industrial art or design. In
Kieselstein-Cord, the Second Circuit attempted to distinguish
artistic expression from industrial design by focusing on the
present use of the item, i.e., the “primary ornamental
aspect” versus the “subsidiary utilitarian function” of the
object at issue. 632 F.2d at 993. In Carol Barnhart, the Second
Circuit moved closer to a process-oriented approach:
     What distinguishes those [Kieselstein-Cord] buckles
     from the Barnhart forms is that the ornamented surfaces
     of the buckles were not in any respect required by their
     utilitarian functions; the artistic and aesthetic features
     could thus be conceived of as having been added to, or
     superimposed upon, an otherwise utilitarian article. The
     unique artistic design was wholly unnecessary to
     performance of the utilitarian function. In the case of the
Nos. 01-3888 & 02-1152                                         35

    Barnhart forms, on the other hand, the features claimed
    to be aesthetic or artistic, e.g., the life-size configuration
    of the breasts and the width of the shoulders, are
    inextricably intertwined with the utilitarian feature, the
    display of clothes. Whereas a model of a human torso,
    in order to serve its utilitarian function, must have some
    configuration of the chest and some width of shoulders,
    a belt buckle can serve its function satisfactorily without
    any ornamentation of the type that renders the
    Kieselstein-Cord buckles distinctive.
773 F.2d at 419. Thus, it was the fact that the creator of the
torsos was driven by utilitarian concerns, such as how dis-
play clothes would fit on the end product, that deprived the
human torsos of copyright protection.
  This process-oriented approach for conceptual separabil-
ity—focusing on the process of creating the object to deter-
mine whether it is entitled to copyright protection—is more
fully articulated in Brandir and indeed reconciles the earlier
case law pertaining to conceptual separability.
    [T]he approach is consistent with the holdings of our
    previous cases. In Kieselstein-Cord, for example, the
    artistic aspects of the belt buckles reflected purely aes-
    thetic choices, independent of the buckles’ function,
    while in Carol Barnhart the distinctive features of the
    torsos—the accurate anatomical design and the sculpted
    shirts and collars—showed clearly the influence of
    functional concerns. Though the torsos bore artistic
    features, it was evident the designer incorporated those
    features to further the usefulness of the torsos as man-
    nequins.
Brandir, 834 F.2d at 1145.
36                                    Nos. 01-3888 & 02-1152

  Furthermore, Brandir is not inconsistent with the more
theoretical rendition of Judge Newman in his Carol Barnhart
dissent—that “the requisite ‘separateness’ exists whenever
the design creates in the mind of an ordinary observer two
different concepts that are not inevitably entertained
simultaneously.” 773 F.2d at 422. When a product has
reached its final form as a result of predominantly func-
tional or utilitarian considerations, it necessarily will be
more difficult for the observer to entertain simultaneously
two different concepts—the artistic object and the utilitarian
object. In such circumstances, Brandir has the added benefit
of providing a more workable judicial methodology by
articulating the driving principle behind conceptual
separability—the influence of industrial design. When the
ultimate form of the object in question is “as much the result
of utilitarian pressures as aesthetic choices,” “[f]orm and
function are inextricably intertwined,” and the artistic
aspects of the object cannot be separated from its utilitarian
aspects for purposes of copyright protection. Brandir, 834
F.2d at 1147.
   Conceptual separability exists, therefore, when the artistic
aspects of an article can be “conceptualized as existing
independently of their utilitarian function.” Carol Barnhart,
773 F.2d at 418. This independence is necessarily informed
by “whether the design elements can be identified as re-
flecting the designer’s artistic judgment exercised independ-
ently of functional influences.” Brandir, 834 F.3d at 1145. If
the elements do reflect the independent, artistic judgment of
the designer, conceptual separability exists. Conversely,
when the design of a useful article is “as much the result of
utilitarian pressures as aesthetic choices,” id. at 1147, the
useful and aesthetic elements are not conceptually separa-
ble.
Nos. 01-3888 & 02-1152                                      37

   Applying this test to the Mara mannequin, we must
conclude that the Mara face is subject to copyright protec-
tion. It certainly is not difficult to conceptualize a human
face, independent of all of Mara’s specific facial features,
i.e., the shape of the eye, the upturned nose, the angular
cheek and jaw structure, that would serve the utilitarian
functions of a hair stand and, if proven, of a makeup model.
Indeed, one is not only able to conceive of a different face
than that portrayed on the Mara mannequin, but one easily
can conceive of another visage that portrays the “hungry
look” on a high-fashion runway model. Just as Mattel is
entitled to protection for “its own particularized expression”
of an “upturned nose[], bow lips, and widely spaced eyes,”
Mattel, 365 F.3d at 136, so too is Heerlein (and, therefore,
Pivot Point as assignee of the copyright registration) entitled
to have his expression of the “hungry look” protected from
copying.
   Mara can be conceptualized as existing independent from
its use in hair display or make-up training because it is the
product of Heerlein’s artistic judgment. When Passage
approached Heerlein about creating the Mara sculpture,
Passage did not provide Heerlein with specific dimensions
or measurements; indeed, there is no evidence that
Heerlein’s artistic judgment was constrained by functional
considerations. Passage did not require, for instance, that
the sculpture’s eyes be a certain width to accommodate
standard-sized eyelashes, that the brow be arched at a
certain angle to facilitate easy make-up application or that
the sculpture as a whole not exceed certain dimensional
limits so as to fit within Pivot Point’s existing packaging
system. Such considerations, had they been present, would
weigh against a determination that Mara was purely the
product of an artistic effort. By contrast, after Passage met
with Heerlein to discuss Passage’s idea for a “hungry-look”
model, Heerlein had carte blanche to implement that vision
38                                    Nos. 01-3888 & 02-1152

as he saw fit. Consequently, this is not a situation, such as
was presented to the Second Circuit in Carol Barnhart, in
which certain features (“accurate anatomical design and the
sculpted shirts and collars”) were included in the design for
purely functional reasons. Brandir, 834 F.2d at 1145. Further-
more, unlike “the headless, armless, backless styrene torsos”
which “were little more than glorified coat-racks used to
display clothing in stores,” Hart, 86 F.3d at 323, the creative
aspects of the Mara sculpture were meant to be seen and
admired. Thus, because Mara was the product of a creative
process unfettered by functional concerns, its sculptural
features “can be identified separately from, and are capable
of existing independently of,” its utilitarian aspects. It
therefore meets the requirements for conceptual separability
and is subject to copyright protection.


                         Conclusion
  The Mara mannequin is subject to copyright protection.
We therefore must reverse the summary judgment in favor
of Charlene Products and Mr. Yau; the case is remanded for
a trial on Pivot Point’s infringement claim. Furthermore,
because Charlene Products and Mr. Yau have not prevailed
on the merits at this point, the judgment of the district court
with respect to attorneys’ fees must be vacated. The cross-
appeal with respect to attorneys’ fees is moot. Pivot Point
may recover its costs in this court.
      REVERSED AND REMANDED; CROSS-APPEAL DISMISSED
Nos. 01-3888 & 02-1152                                       39

  KANNE, Circuit Judge, dissenting. Writing for the majority,
Judge Ripple has applied his usual thorough and scholarly
approach to this difficult intellectual property problem;
however, I cannot join the majority opinion because I am
not persuaded that the “Mara” mannequin is copyrightable.
All functional items have aesthetic qualities. If copyright
provided protection for functional items simply because of
their aesthetic qualities, Congress’s policy choice that gives
less protection in patent than copyright would be under-
mined. See American Dental Ass’n v. Delta Dental Plans Ass’n,
126 F.3d 977, 980 (7th Cir. 1997).
   The majority rightly assumes that Mara is a “useful ar-
ticle” as defined in 17 U.S.C. § 101. Opinion at 13. To receive
copyright protection as a “sculptural work,” then, Mara
must come within the narrow restrictions placed on “useful
articles” in the definition of pictorial, graphic, and sculp-
tural works:
    [T]he design of a useful article . . . shall be considered a
    . . . sculptural work only if, and only to the extent that,
    such design incorporates . . . sculptural features that can
    be identified separately from, and are capable of existing
    independently of, the utilitarian aspects of the article.
17 U.S.C. § 101 (emphasis added). As the district court
noted, the statute requires, on its face, that sculptural fea-
tures must be separately identified from the utilitarian
aspects of the article (“conceptual separability”) and they
must exist independently from the utilitarian aspects of the
article (“physical separability”) in order to receive copyright
protection. As to whether both conceptual and physical
separability are required for copyrightability, most courts
and commentators have concluded that only one or the
other test is appropriate. But that issue is not presented here
because Mara is not copyrightable regardless of whether
both or either is applied.
40                                      Nos. 01-3888 & 02-1152

  Taking physical separability first, the district court used
examples from case law to illustrate that the sculptural
features in many useful items can be physically removed
from the object and sold separately without affecting the
functionality of the useful article. See, e.g., Mazer v. Stein, 347
U.S. 201 (1954) (holding that a sculpture of a dancer carved
into the base of a lamp may be copyrighted); Kieselstein-Cord
v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980)
(holding that decorative belt buckles could be copyrighted
as separate objects sold not to hold up one’s pants).
   Mara, on the other hand, has only functional attributes.
Thus, any physical separation of a portion of her would not
be independent of her utilitarian aspects. She is sold to
beauty schools as a teaching device; students style her hair
and apply makeup as realistic training for such pursuits on
live subjects. A mannequin head without a neck, or with
different eyes and musculature, would not serve the utili-
tarian purpose of applying makeup or teaching the art of
matching hair styles to facial features. As the district court
explained: “Beauty students style hair to flatter the face, not
to be worn on featureless ovoids. The use of a mannequin
head in training students of beauty schools lies in its aesthetic
qualities.” There is nothing in Mara that we could physically
remove that would not be part of Mara’s utility as a teach-
ing aid. Like mannequins of human torsos, Carol Barnhart
Inc. v. Economy Cover Corp., 773 F.2d 411, 418-19 (2d Cir.
1985), mannequins of human faces are not physically
separable from their functional purpose and are therefore
not copyrightable.
  Next, the district court considered various restatements of
the meaning of “conceptual separability” (whether features
can be identified or conceived of separately from the
utilitarian aspects) and applied the most appropriate one to
Mara. Professor Goldstein, in his treatise, Copyright: Princi-
Nos. 01-3888 & 02-1152                                       41

ples, Law & Practice, presents a reasonable explanation of the
statutory text: “a . . . sculptural feature incorporated in the
design of a useful article is conceptually separable if it can
stand on its own as a work of art traditionally conceived,
and if the useful article in which it is embodied would be
equally useful without it.” Mara has no conceptually
separable features to which copyright protection could be
granted. Her features are incapable of being identified
separately from the utilitarian use of those features. Without
features, the mannequin’s head and neck would be little
more than an egg on a stick, useless for its intended pur-
pose. Mara possesses neither physical nor conceptual
separability.
   The majority, concluding that Congress intended “to state
a single, integrated standard,” deduced that the standard
must be “conceptual separability.” This may be correct, as
it is very difficult to divine the distinction between physical
and conceptual separability if those standards are properly
stated. In my view, however, the majority’s explanation of
conceptual separability lacks a basis in the statute. As the
majority sees it, conceptual separability “exists . . . when the
artistic aspects of an article can be conceptualized as
existing independently of their utilitarian function.” Opin-
ion at 36. The majority further explains that the way to
determine if this is the case is to look to the process of
design: if independent “artistic” choices were made in the
sculpture’s creation, and such choices were not later sullied
by the influence of industrial design, then some of the useful
article is a conceptually separable sculpture and therefore
copyrightable. Opinion at 36-37.
  Problematically, the majority’s test for conceptual separ-
ability seems to bear little resemblance to the statute. The
statute asks two questions: Does the useful article incorpo-
rate “sculptural features that can be identified separately
42                                    Nos. 01-3888 & 02-1152

from the utilitarian aspects” of the article? And are these
features “capable of existing independently” from the utili-
tarian aspects? The copyright statute is concerned with
protecting only non-utilitarian features of the useful article.
To be copyrightable, the statute requires that the useful
article’s functionality remain intact once the copyrightable
material is separated. In other words, Pivot Point needs to
show that Mara’s face is not a utilitarian “aspect” of the
product “Mara,” but rather a separate non-utilitarian “fea-
ture.” The majority, by looking only to whether the features
could also “be conceptualized as existing independently of
their utilitarian function” and ignoring the more important
question of whether the features themselves are utilitarian
aspects of the useful article, mistakenly presupposes that
utilitarian aspects of a useful article can be copyrighted. If
we took away Mara’s facial features, her functionality
would be greatly diminished or eliminated, thus proving
that her features cannot be copyrighted.
   Moreover, the “process-oriented approach,” advocated by
the majority drifts even further away from the statute.
Opinion at 35. The statute looks to the useful article as
it exists, not to how it was created. I believe it simply is
irrelevant to inquire into the origins of Mara’s eyes, cheek-
bones, and neck. If such features have been fully incorpo-
rated as functional aspects of the mannequin, then copyright
does not provide protection. Even if we were to look at the
“process” that led to the creation of Mara, it is undeniable
that, from the beginning, Pivot Point intended Mara to serve
a functional purpose and commissioned her creation to
fulfill that purpose (not to create a work of art for aesthetic
beauty).
  The majority, as evidenced by its emphasis on the fact that
Charlene Products apparently copied Mara with its doll,
“Liza,” seems unduly concerned in this context with
Nos. 01-3888 & 02-1152                                        43

Charlene’s questionable business practices. This is immate-
rial to the determination of whether the Mara doll is pro-
tected by copyright law. Importantly, other possible legal
protections for Pivot Point’s intellectual property—design
patent, trademark, trade dress, and state unfair competition
law—are available to address the majority’s concerns.
Copyright does not protect functional products. Charlene is
free, under its own brand name, to copy and sell copies of
useful articles that do not have patent protection. See, e.g.,
TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23
(2001); Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.
141 (1989); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225
(1964). I fear that the majority’s opinion grants copyright
protection to functional aspects of a useful article. I would,
therefore, affirm the district court’s grant of summary
judgment in favor of Charlene Products and Mr. Yau.

A true Copy:
        Teste:

                            _____________________________
                             Clerk of the United States Court of
                               Appeals for the Seventh Circuit




                     USCA-02-C-0072—6-25-04
