copyrightability can be supported by a mere finding of pictorial or sculptural authorship. Costumes, on the other hand, have been treated as useful articles, necessitating a finding of separable pictorial or sculptural authorship in order to support copyright protection.
In one of the leading cases on masks, Masquerade Novelty v. Unique Industries, 912 F.2d 683 (3rd Cir. 1990), the court held animal masks were not useful articles because "nose masks have no utility that does not derive from their appearance." The masks were configured to resemble the nose of a pig, elephant, and parrot, and we found to be copyrightable. In Pasillas v. McDonald's Corp.,927 F.2d 400 (9th Cir. 1991). copyright in a Halloween mask depicting a man in the moon was conceded to be valid. but summary judgment was granted in favor of the defendant due to lack of substantial similarity.
While the cases consistently treat costumes as useful articles, the applicable standards for determining separability are unclear. In Animal Fair Inc. v. Amfesco Industries. Inc. 620 F.Supp. 175 (D.C. Minn. 1985). aff'd mem., 794 F.2d 878 (8th Cu.1988). the district court upheld copyright in a slipper depicting a bear's foot. While treating the slipper as a useful article, the court concluded the whole shape and design were recognizable as a fanciful artistic rendition of a bear's paw. The Eighth Circuit affirmed without written opinion.
The test of conceptual separability was raised in Act Young Imports. Inc. v. B & E Sales Co., Inc., 873 F. Supp. 672 (S.D.N.Y. 1987). in a case involving children's backpacks. In that case the court upheld copyright in animal shaped backpacks because the animal image was separate from the useful function of the packs.
In Nationol Theme Productions Inc. v. Jerry B. Beck Inc., 898 F. Supp 1348 (S.D. Cal. 1988) , district court held that while masquerade costumes were useful articles, the costumes involved in the case successfully met the conceptual separability test. The works in issue were elaborate costumes depicting independently recognizable images and were registered by the Copyright Office.
In the complex case of Whimsicality, Inc. v. Rubie's Costumes Co. Inc., 891 F.2d 452 (2nd Cir. 19891. the Second Circuit denied a copyright action alleging infringement of six costumes on the grounds that the claims had been misrepresented to the Copyright Office. The costumes had been registered as "soft sculptures" and the applications did not disclose that the works were costumes. Under the unique facts of the case, the plaintiff was denied relief.
3. Notice of Inquiry
Due to the uncertainty regarding the registrability of masks and costume designs. the Copyright Office published copyrightable mask is combined a notice of inquiry on May 2 1991. 58 FR 20241 (1991) concerning registration of costume designs. The notice summarized the applicable principles in the area, including the case law. The notice further raised eight questions on which Comment was sought.
The notice generated twelve comments. Some of the comments came the garment industry, comments generally sought an expansion of the protection available to wearing apparel. Other comments came from the costume industry, and those comments were generally mixed as to whether or not the availability of copyright should be expanded. The remainder came from the bar and academic communities.
Of the comments which were received. most took the position that so called fanciful costumes should be registered, while ordinary wearing apparel should be rejected. However, none of the comments taking such a position set out workable guidelines for separating fanciful costumes from wearing apparel. A differing view was expressed by one law firm, which took the position that all costumes were useful articles without any separate artistic authorship.
4. Summary of Policies adopted
The examining practices with respect to masks will not treat masks as useful articles, but will instead determine registrability on the existence of minimum pictorial and/or sculptural authorship. Garment designs (excluding separately identifiable pictorial representations of designs imposed upon the garment) will not be registered even if they contain ornamental features, or are intended to be used as historical or period dress. Fanciful costumes will be treated as useful articles and will be registered only upon a finding of separately identifiable pictorial and/or sculptural authorship.
5. Examining Practices With Respect to Masks Current examining practices base registration of masks on the existence of minimum pictorial and/or sculptural authorship. Since masks generally portray their own appearance, this subject matter appears to fall outside of the definition of "useful article" in section 101 of title 17. Both the case law and comment latter appear to agree with this position
Although a mask alone is not considered a useful article a legitimate question arises regarding registration practices in instance where a copyrightable mask is combined and sold as a unit with an otherwise and uncopyrightable costume. In such circumstances, the Copyright Office will register the "work" on the basis of the copyrightable authorship in the mask.
This approach appears to be consistent with Mazer v. Stein, 347 U.S. 201 (1954), holding that a copyrightable work of art does not lose its copyrightability upon incorporation into a useful article, Again, only the separable artistic features, in this case the mask, would be subject to copyright protection.
6. Examination Practices With Respect to Garment designs
A few of the comment letters were from the garment industry urging a broader availability of copyright protection for garment designs. On this point the copyright law is reasonably clear. Gannents are useful articles. and the designs of such garments are generally outside of the copyright law.
Parties who wish to modify this position must address their concern to the Congress, since establishment of such protection must have Congressional authorization.
The general policy of nonregistrability of garment designs will be applied not only to ordinary wearing apparel, but also to period and historical dress, and uniforms. Wearing apparel incorporated into theatrical productions will likewise be treated under the standard applying to garment designs in general.
7. Examining Practices With Respect to Fanciful Costumes
For purposes of copyright registration, fanciful costumes will be treated as useful articles. Costumes serve a dual purpose of clothing the body and portraying their appearance. Since clothing the body serves as a useful function, costumes fall within the literal defintion of useful article. In addition, the case law consistently treats costumes as useful articles, and a Copyright Office decision to differ substantially from these court decisions would appear difficult to justify.
In accordance with the copyright principles applying to useful article, fanciful costumes will be registered if they contain separable pictorial or sculptural authorship. The separable authorship may be physically separable meaning that the work of art can be physically removed from the costume, or
