MAZER v. STEIN

MR. JUSTICE REED delivered the opinion of the Court.

This case involves the validity of copyrights obtained by respondents for statuettes of male and female dancing figures made of semivitreous china. The controversy centers around the fact that although copyrighted as "works of art," the statuettes were intended for use and used as bases for table lamps, with electric wiring, sockets and lamp shades attached.

Respondents are partners in the manufacture and sale of electric lamps. One of the respondents created original works of sculpture in the form of human figures by traditional clay-model technique. From this model, a production mold for casting copies was made. The resulting statuettes, without any lamp components added, were submitted by the respondents to the Copyright Office for registration as "works of art" or reproductions thereof under § 5 (g) or § 5 (h) of the copyright law,1 and certificates of registration issued. Sales (publication in accordance with the statute) as fully equipped lamps preceded the applications for copyright registration of the statuettes. 17 U. S. C. (Supp. V, 1952) §§ 10, 11, 13, 209; Rules and Regulations, 37 CFR, 1949, §§ 202.8 and 202.9. Thereafter, the statuettes were sold in quantity throughout the country both as lamp bases and as statuettes. The sales in lamp form accounted for all but an insignificant portion of respondents' sales.

Petitioners are partners and, like respondents, make and sell lamps. Without authorization, they copied the statuettes, embodied them in lamps and sold them.

The instant case is one in a series of reported suits brought by respondents against various alleged infringers of the copyrights, all presenting the same or a similar question.2 Because of conflicting decisions,3 we granted certiorari. 346 U.S. 811. In the present case respondents sued petitioners for infringement in Maryland. Stein v. Mazer, 111 F.Supp. 359. Following the Expert decision and rejecting the reasoning of the District Court in the Rosenthal opinion, both referred to in the preceding note, the District Court dismissed the complaint. The Court of Appeals reversed and held the copyrights valid. Stein v. Mazer, 204 F.2d 472.4 It said: "A subsequent utilization of a work of art in an article of manufacture in no way affects the right of the copyright owner to be protected against infringement of the work of art itself." Id., at 477.

Petitioners, charged by the present complaint with infringement of respondents' copyrights of reproductions of their works of art, seek here a reversal of the Court of Appeals decree upholding the copyrights. Petitioners in their petition for certiorari present a single question:

The first paragraph accurately summarizes the issue. The last gives it a quirk that unjustifiably, we think, broadens the controversy. The case requires an answer, not as to a manufacturer's right to register a lamp base but as to an artist's right to copyright a work of art intended to be reproduced for lamp bases. As petitioners say in their brief, their contention "questions the validity of the copyright based upon the actions of the respondents." Petitioners question the validity of a copyright of a work of art for "mass" production. "Reproduction of a work of art" does not mean to them unlimited reproduction. Their position is that a copyright does not cover industrial reproduction of the protected article. Thus their reply brief states:

It is not the right to copyright an article that could have utility under §§ 5 (g) and (h), note 1, supra, that petitioners oppose. Their brief accepts the copyrightability of the great carved golden saltcellar of Cellini but adds:

It is publication as a lamp and registration as a statue to gain a monopoly in manufacture that they assert is such a misuse of copyright as to make the registration invalid.

No unfair competition question is presented. The constitutional power of Congress to confer copyright protection on works of art or their reproductions is not questioned.5 Petitioners assume, as Congress has in its enactments and as do we, that the constitutional clause empowering legislation "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries," Art. I, § 8, cl. 8, includes within the term "Authors" the creator of a picture or a statue. The Court's consideration will be limited to the question presented by the petition for the writ of certiorari.6 In recent years the question as to utilitarian use of copyrighted articles has been much discussed.7

In answering that issue, a review of the development of copyright coverage will make clear the purpose of the Congress in its copyright legislation. In 1790 the First Congress conferred a copyright on "authors of any map, chart, book or books already printed."8 Later, designing, engraving and etching were included;9 in 1831 musical compositions;10 dramatic compositions in 1856;11 and photographs and negatives thereof in 1865.12

The Act of 1870 defined copyrightable subject matter as:

The italicized part added three-dimensional work of art to what had been protected previously.14 In 1909 Congress again enlarged the scope of the copyright statute.15 The new Act provided in § 4:

Some writers interpret this section as being coextensive with the constitutional grant,17 but the House Report, while inconclusive, indicates that it was "declaratory of existing law" only.18 Section 5 relating to classes of writings in 1909 read as shown in the margin with subsequent additions not material to this decision.19 Significant for our purposes was the deletion of the fine-arts clause of the 1870 Act.20 Verbal distinctions between purely aesthetic articles and useful works of art ended insofar as the statutory copyright language is concerned.21

The practice of the Copyright Office, under the 1870 and 1874 Acts and before the 1909 Act, was to allow registration "as works of the fine arts" of articles of the same character as those of respondents now under challenge. Seven examples appear in the Government's brief amicus curiae.22 In 1910, interpreting the 1909 Act, the pertinent Copyright Regulations read as shown in the margin.23 Because, as explained by the Government, this regulation "made no reference to articles which might fairly be considered works of art although they might also serve a useful purpose," it was reworded in 1917 as shown below.24 The amicus brief gives sixty examples selected at five-year intervals, 1912-1952, said to be typical of registrations of works of art possessing utilitarian aspects.25 The current pertinent regulation, published in 37 CFR, 1949, § 202.8, reads thus:

So we have a contemporaneous and long-continued construction of the statutes by the agency charged to administer them that would allow the registration of such a statuette as is in question here.26

This Court once essayed to fix the limits of the fine arts.27 That effort need not be appraised in relation to this copyright issue. It is clear Congress intended the scope of the copyright statute to include more than the traditional fine arts. Herbert Putnam, Esq., then Librarian of Congress and active in the movement to amend the copyright laws, told the joint meeting of the House and Senate Committees:

The successive acts, the legislative history of the 1909 Act and the practice of the Copyright Office unite to show that "works of art' and "reproductions of works of art" are terms that were intended by Congress to include the authority to copyright these statuettes. Individual perception of the beautiful is too varied a power to permit a narrow or rigid concept of art. As a standard we can hardly do better than the words of the present Regulation, § 202.8, supra, naming the things that appertain to the arts. They must be original, that is, the author's tangible expression of his ideas. Compare Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 59-60. Such expression, whether meticulously delineating the model or mental image or conveying the meaning by modernistic form or color, is copyrightable.29 What cases there are confirm this coverage of the statute.30

The conclusion that the statues here in issue may be copyrighted goes far to solve the question whether their intended reproduction as lamp stands bars or invalidates their registration. This depends solely on statutory interpretation. Congress may after publication protect by copyright any writing of an author. Its statute creates the copyright.31 It did not exist at common law even though he had a property right in his unpublished work.32

But petitioners assert that congressional enactment of the design patent laws should be interpreted as denying protection to artistic articles embodied or reproduced in manufactured articles.33 They say:

Their argument is that design patents require the critical examination given patents to protect the public against monopoly. Attention is called to Gorham Co. v. White, 14 Wall. 511, interpreting the design patent law of 1842, 5 Stat. 544, granting a patent to anyone who by "their own industry, genius, efforts, and expense, may have invented or produced any new and original design for a manufacture . . . ." A pattern for flat silver was there upheld.34 The intermediate and present law differs little. "Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, . . . " subject generally to the provisions concerning patents for invention. § 171, 66 Stat. 805. As petitioner sees the effect of the design patent law:

Petitioner has furnished the Court a booklet of numerous design patents for statuettes, bases for table lamps and similar articles for manufacture, quite indistinguishable in type from the copyrighted statuettes here in issue.35 Petitioner urges that overlapping of patent and copyright legislation so as to give an author or inventor a choice between patents and copyrights should not be permitted. We assume petitioner takes the position that protection for a statuette for industrial use can only be obtained by patent, if any protection can be given.36

As we have held the statuettes here involved copyrightable, we need not decide the question of their patentability. Though other courts have passed upon the issue as to whether allowance by the election of the author or patentee of one bars a grant of the other, we do not.37 We do hold that the patentability of the statuettes, fitted as lamps or unfitted, does not bar copyright as works of art. Neither the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted. We should not so hold.38

Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea—not the idea itself.39 Thus, in Baker v. Selden, 101 U.S. 99, the Court held that a copyrighted book on a peculiar system of bookkeeping was not infringed by a similar book using a similar plan which achieved similar results where the alleged infringer made a different arrangement of the columns and used different headings. The distinction is illustrated in Fred Fisher, Inc. v. Dillingham, 298 F. 145, 151, when the court speaks of two men, each a perfectionist, independently making maps of the same territory. Though the maps are identical, each may obtain the exclusive right to make copies of his own particular map, and yet neither will infringe the other's copyright. Likewise a copyrighted directory is not infringed by a similar directory which is the product of independent work.40 The copyright protects originality rather than novelty or invention—conferring only "the sole right of multiplying copies."41 Absent copying there can be no infringement of copyright.42 Thus, respondents may not exclude others from using statuettes of human figures in table lamps; they may only prevent use of copies of their statuettes as such or as incorporated in some other article. Regulation § 202.8, supra, makes clear that artistic articles are protected in "form but not their mechanical or utilitarian aspects." See Stein v. Rosenthal, 103 F.Supp. 227, 231. The dichotomy of protection for the aesthetic is not beauty and utility but art for the copyright and the invention of original and ornamental design for design patents. We find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration. We do not read such a limitation into the copyright law.

Nor do we think the subsequent registration of a work of art published as an element in a manufactured article, is a misuse of the copyright. This is not different from the registration of a statuette and its later embodiment in an industrial article.

"The copyright law, like the patent statutes, makes reward to the owner a secondary consideration." United States v. Paramount Pictures, 334 U.S. 131, 158. However, it is "intended definitely to grant valuable, enforceable rights to authors, publishers, etc., without burden-some requirements; `to afford greater encouragement to the production of literary [or artistic] works of lasting benefit to the world.' " Washingtonian Co. v. Pearson, 306 U.S. 30, 36.

The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in "Science and useful Arts." Sacrificial days devoted to such creative activities deserve rewards commensurate with the services rendered.

Affirmed.

Opinion of MR. JUSTICE DOUGLAS, in which MR. JUSTICE BLACK concurs.

An important constitutional question underlies this case—a question which was stirred on oral argument but not treated in the briefs. It is whether these statuettes of dancing figures may be copyrighted. Congress has provided that "works of art," "models or designs for works of art," and "reproductions of a work of art" may be copyrighted (17 U. S. C. § 5); and the Court holds that these statuettes are included in the words "works of art." But may statuettes be granted the monopoly of the copyright?

Article I, § 8 of the Constitution grants Congress the power "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors . . . the exclusive Right to their respective Writings . . . ." The power is thus circumscribed: it allows a monopoly to be granted only to "authors" for their "writings." Is a sculptor an "author" and is his statue a "writing" within the meaning of the Constitution? We have never decided the question.

Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, held that a photograph could be copyrighted.

Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, held that chromolithographs to be used as advertisements for a circus were "pictorial illustrations" within the meaning of the copyright laws. Broad language was used in the latter case, ". . . a very modest grade of art has in it something irreducible, which is one man's alone. That something he may copyright unless there is a restriction in the words of the act." 188 U. S., at 250. But the constitutional range of the meaning of "writings" in the field of art was not in issue either in the Bleistein case nor in Woolworth Co. v. Contemporary Arts, 344 U.S. 228, recently here on a writ of certiorari limited to a question of damages.

At times the Court has on its own initiative considered and decided constitutional issues not raised, argued, or briefed by the parties. Such, for example, was the case of Continental Bank v. Rock Island R. Co., 294 U.S. 648, 667, in which the Court decided the constitutionality of § 77 of the Bankruptcy Act though the question was not noticed by any party. We could do the same here and decide the question here and now. This case, however, is not a pressing one, there being no urgency for a decision. Moreover, the constitutional materials are quite meager (see Fenning, The Origin of the Patent and Copyright Clause of the Constitution, 17 Geo. L. J. 109 (1929); and much research is needed.

The interests involved in the category of "works of art," as used in the copyright law, are considerable. The Copyright Office has supplied us with a long list of such articles which have been copyrighted—statuettes, book ends, clocks, lamps, door knockers, candlesticks, inkstands, chandeliers, piggy banks, sundials, salt and pepper shakers, fish bowls, casseroles, and ash trays. Perhaps these are all "writings" in the constitutional sense. But to me, at least, they are not obviously so. It is time that we came to the problem full face. I would accordingly put the case down for reargument.