Law School Case Brief
Brandir Int’l, Inc. v. Cascade Pac. Lumber Co. - 834 F.2d 1142 (2d Cir. 1987)
The statutory definition of pictorial, graphic, and sculptural works states that 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.
David Levine, the chief owner of appellant Brandir International, Inc., created “RIBBON Rack,” a bicycle rack made of bent tubing that was said to have originated from a wire sculpture. Upon discovering that another company, Cascade Pacific Lumber Co., was selling a similar product, appellant placed a copyright notice on all RIBBON Racks before shipment. Thereafter, appellant submitted five copyright applications for registration to the Copyright Office. The Copyright Office refused registration by letter, stating that the RIBBON 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.” An appeal to the Copyright Office was denied. In the subsequent suit brought in the United States District Court for the Southern District of New York, the district court granted summary judgment on both the copyright and trademark claims to defendant Cascade Pacific Lumber Co., d/b/a Columbia Cascade Co., manufacturer of a similar bicycle rack. Appellant challenged the district court’s decision.
- Was the appellant’s RIBBON Rack copyrightable?
- Did the district court err in granting summary judgment on appellant’s trademark and unfair competition claims to defendant Cascade?
The Circuit Court of Appeals applied the Denicola test to determine if the rack was copyrightable. To state the Denicola test in the language of conceptual separability, 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 elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability was said to exist. In the case at bar, the Court found that the form of the rack was influenced by utilitarian concerns and that any aesthetic elements were not conceptually separable from the utilitarian elements; therefore, the rack was not copyrightable.
Regarding the second issue, the Court held that the district court erred in dismissing appellant’s trademark and unfair competition claims. According to the Court, the design of a product itself may function as its packaging or protectable trade dress which may be protected under either section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), or New York State unfair competition law. As such, the Court reversed and remanded the district court's decisions on appellants trademark and unfair competition claims. On remand, the issue of functionality should be viewed in terms of bicycle racks generally and not one-piece undulating bicycle racks specifically.
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