Stealing Beauty: Pivot Point International v ... - UW Law School

2006:1067 Stealing Beauty 1085
Newman disagreed with the majority’s decision that a rational trier of
fact could not determine that the mannequins created a concept separable
from the utilitarian function of the mannequin. 115 Although Judge
Newman’s test has been praised by legal scholars, courts have opted to
apply the majority’s test instead of the dissent. 116
Professor Paul Goldstein devised a fourth test for conceptual
separability that directly stemmed from Barnhart. 117 Under Goldstein’s
test, conceptual separability exists if a work 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 the artistic part. 118
Goldstein’s test is almost identical to the Barnhart test, the difference
being that it substitutes the court’s requirement that the artistic part be
unnecessary with the requirement that the item be “equally useful”
without the artistic part. 119 Despite language suggesting that the test only
applies to works of art worthy of display in museums, 120 courts have
applied Goldstein’s test to more modest artistic expressions. 121
Finally, in Brandir, the Second Circuit implemented the work of
another law professor, Robert Denicola. 122 Denicola’s test would extend
115. Id. at 426.
116. See, e.g., Collezione Europa U.S.A., Inc. v. Hillsdale House Ltd., 243 F.
Supp. 2d 444 (M.D.N.C. 2003); Celebration Int’l v. Chosun Int’l, 234 F. Supp. 2d 905
(S.D. Ind. 2002). However, Judge Newman’s dissent is just as highly regarded as the
majority opinion, if not more so. See Bonazoli v. R.S.V.P. Int’l, 353 F. Supp. 2d 218,
223 (D.R.I. 2005) (criticizing the Carol Barnhart majority while applying Judge
Newman’s dissent).
117. 1 PAUL GOLDSTEIN, GOLDSTEIN ON COPYRIGHT § 2.5.3, at 2:76 (3d ed.
2005).
118. Celebration, 234 F. Supp. 2d at 914 (citing GOLDSTEIN, supra note 114, §
2.5.3, at 2:76).
119. See id. The main difference seems to be that some courts have construed
the Barnhart test as a test that determines physical separability, whereas the Goldstein
test determines conceptual separability. See, e.g., id. (“Professor Goldstein’s conceptual
separability test is very similar, if not the same as, the Barnhart physical separability
test.”). This distinction is questionable, however. Physical separability essentially asks
whether an artistic part of a useful article could be sliced off for separate display. See
Pivot Point Int’l v. Charlene Prods., Inc., 170 F. Supp. 2d 828, 833 (N.D. Ill. 2001).
However, as stated above, the Barnhart court said that the belt buckles in Kieselstein
were separable because they were not necessary to the belt’s function, not because the
design could be sliced away for a separate display. Barnhart, 773 F.2d at 419.
120. See 234 F. Supp. 2d at 914 (“[The “work of art” at issue] is obviously not
the type of art that would be accepted by a museum for its permanent collection, in
contrast to some of the belt buckles at issue in Kieselstein-Cord.”).
121. See, e.g., id. (applying Goldstein’s test to a costume mask in the shape of a
tiger).
122. Brandir Int’l v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir.
1987).