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

2006:1067 Stealing Beauty 1075
the statute’s definition of a useful article. 51 Charlene argued that Mara
served another useful purpose: to train cosmetology students how to
apply makeup. 52 The Seventh Circuit upheld the district court’s
conclusion that Mara was a useful article. 53
The court found it more difficult, however, to determine whether
Mara’s artistic elements were separable from her utilitarian function. In
its discussion, the Seventh Circuit analyzed the various tests for
determining conceptual separability. 54 Instead of adopting the tests
proposed by either the plaintiff or the defendant, 55 the court synthesized
two preexisting tests for determining conceptual separability. 56 The
court looked first at the Barnhart test, which provides that a design
element is conceptually separable from the item’s utilitarian function if it
can exist independently of the item’s overall utilitarian function. 57 The
second test, the Brandir test, states that the same design element is
conceptually separable to the extent that it reflects the artist’s own
expression uninhibited by functional concerns. 58
51. Id. at 919. A “useful article” is an article that has an intrinsic utilitarian
function that is not merely to portray the appearance of itself or to convey information.
17 U.S.C. § 101 (2000).
52. 372 F.3d at 920.
53. Id.
54. Id. at 921-30.
55. The plaintiff argued that the central inquiry for determining conceptual
separability is whether the article can be considered a work of art, which the plaintiff
claimed satisfied “most, if not all, of the current definitions of conceptual separability.”
Id. at 923. On the other hand, the defense again proposed implementation of the
Goldstein test, which determines whether the useful article would be equally useful
without the artistic features. Id. at 923-24. The court refused to apply either test,
although it deemed both approaches “thoughtful.” Id. at 924.
56. Id. at 931.
57. Id. (citing Carol Barnhart, Inc. v. Econ. Cover Corp., 773 F.2d 411, 418 (2d
Cir. 1985)).
58. Id. at 931 (citing Brandir Int’l v. Cascade Pac. Co., 834 F.2d 1142, 1145 (2d
Cir. 1987)). The Brandir court adopted a test created by Professor Robert Denicola. Id.
Denicola’s test applies to both works of applied art and works of industrial design. See
Robert C. Denicola, Applied Art and Industrial Design: A Suggested Approach to
Copyright in Useful Articles, 67 MINN. L. REV. 707, 708-709 (1983). His test directly
responds to Congress’ decision to protect works of applied art but not industrial design.
Id. at 708. Congress seemed to believe that, if industrial designs were copyrightable,
designers would have an unfair monopoly in designs for items that practically only had
one design. Id. at 741-42. Denicola disagrees with this argument because it
oversimplifies the process of industrial design:
In an effort to avoid monopolization of functional attributes, the law has long
denied protection in instances in which utilitarian requirements dictated a
particular form. The relationship between form and function, however, is
seldom so direct. Typically, a variety of forms will be compatible with
functional objectives. The choice is thus constrained rather than dictated.